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Full text of "[Decisions of the Commissioner for Trademarks] / Commissioner for Trademarks."

1899-1903 



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UNITED STATES PATENT OPFTCE, 



Ex p p-r t e Gould -: Jaudin, 



Endorsed March 21, 1899. 

On appeal from the action of the examiner in refusinc to 
rerister the representation of a red cross associated with the words 
"Red Cross Brand", as a trade-mark for certain named fruits and vegeta- 
jles, on reristered trade-marks IIos. 1,412; 4,021; 5,338, the Com.- 
missioner held as follows: - 

"The decision of the examiner is affirmed." 

C. H, Due 11, (Sifrned) 
Commissioner . 
'larch 21, 1099. 



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UNITED STATES PATENT OFFICE. 



Ex parte Plshoj;. 



liry,n. Vol CG, Page 400. 



On appeal fron . motion of the examiner In refuging: to 
resl^tT!* tho words " HICKORY J.1BAT GivIOKB " ac a -rado-marX for a 
conpoun'i Tor preserving; i;:<i-'~ttB, upori f.io groniid that the wordB -ire 



Doth d'?^orlptl rr -dvertisuig in o<iaracter, 'oitliic tlia"'. the 

oonro^ini ic -Terived fron tho si.ioKe of hickory wood, >air: that It Is 

used for the purpose of preserving meats, the Cammissioner held as 

follows : 

•*Afte-« a oarefUl consider at ton of thle oase, I atn of the 
opinion the.t the decision of tho oxaiiner i^ corr'^ot, Tho re^^f^ons 
for ref'jirslng reclstration are oXearly and no--^>^otlv Rp»t ro-rth In 
his statement in s>n^T7or to thf? r>,ppeal. 'Jpo; y . "'I, 

cioclsio?'i 1b aff irr.ed. •' 

(Sli3ned) C. H. J>jiell, 

CoTTiiiH^ loner, 

March 23, 1339. 



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UNITED STATES PATENT OTTICE. 



Ex parte Hayner, 



MS.D. , Vol. 66, Page 418. 



On appeal from the action of the examiner In refusing to 

register the eorapound word "FIBRE-CORD," as a trade-mark for 

twines and oords made of paper, upon the groiind that said word 1$ 

either descriptive and Indloative of the struoture of the goods 

or deceptive in character, the Commissioner held as follows: 

"In accordance with the ruling in ex parte Hance Bros. A 
White, 66 MS.D., 274, the decision of the examiner is affirmed." 



(Signed) A. P. Greeley, 

Acting Co»»jralSBlon'5r. 

Mow Assistant Commissioner. 



Iter oh 28, 1899. 






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OOMMISStONEE'S DEOISIOM 



Ex PARTE Gr. F. HeUBLEIN & BROTHEB, 

Decided March h, iS9S. 

Tbade-Makk — " Apple ajti) Honey " — Descrxptive Words. 
The words "Apple and Honey" refused registration as a 
trade-mark for cures for coughs, colds, etc., as tliey are de- 
scriptive under the decisions of the Federal courts. (Brown 
Chemical Co. v. Meyer, 139 U. S., 540, cited.) 



On appeal. 



trade-Mark foe MEDicniE. 



Application for registration filed December 33, 

1897, No. 54,777. 

Mr. Charles L. Burdett for the applicants. 

JDuELL, Commissioner: 

Applicants have taken this appeal from the de- 
cision of the Examiner of Trade-Marks refusing 
registration for the words "Apple and Honey" as 
a trade-mark for "Cures for Coughs, Colds," ete. 

The Examiner's action is based on the proposi- 
tion that the words as used by applicants have ,a 
deceptive or descriptive meaning. It is admitted 
by applicants' counsel that the main ingredients 
in the liquid compound to which the words are ap» 
plied are cider- brandy and honey. The words 
"Apple and Honey" are therefore not deceptive. 
Are they descriptive? The word "Honey" is ad- 
mittedly descriptive. The word "Apple" as here 
used is suggestively descriptive. True "apples" 
as "apples" are not used in the compound; but 
"cider-brandy," which is used, is the expressed 
juice of apples distilled. 

The phrase "Apple and Honey" is descriptive. 
It may not be entirely descriptive, but it is suffi- 
ciently so under the decisions of the Federal courts 
to compel me to refuse registration. The case most 
in point is that of Brown Chemieo2 Co. v. Meyer, 
(139 U. S., 540, 543.) It is there said: 

The general proposition is ivell established that words which 
are merely descriptive of the character, qualities or composition 
of an article, or of the place where it is manaurclured or pro- 
duced, cannot be monopolized as a trade-mark; {Canal Com- 
panyv. C?arfc, 13 Wall.. 311; Manufacturing Company v. Trainer, 
101 U. S., 51; Casieell v. Davis, 35 N. Y., 381; Thomsons. Win- 
chester, 19 fick., S14; Raggett V. Findlater, L. R., 17 Eq., 29:) and 
we tiiink the words '"Iron Bitters" are so far indicative of the 
ingredients, characteristics and purposes of the plaintiff's prep- 
aration as to fall within the scope oi these decisions. 

" Iron Bitters '' are no more indicative than are 
"Apple and Honey" as used by applicants. 
The decision of the Examiner is affirmed, « 



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CJOMMISSIONER'g DEOISIOBS. 

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Ex PARTE Hance Brothers & White, / 

Decided March 7, 1S99, 

1. Trade-Mabk—" Chill Stop" — Desckiptive 'Words. 

The words " Chill Stop " refused registration as a trade- 
mark for chills and fever, malaria, and intermittent fever, as 
they express a quality of the article upon which they are used. 

2. Same— Same — Abhangement of Words. 

While the arrangement of the words "Chill Stop" is some- 
what different from the ordinai^y and they do not express 
quality in the most grammatical form, they being catchy and 
slangy, they are nevertheless descriptive as well as advertis- 
ing. (Exparie Brigham, SO O. Gf., 891, cited.) 
8. Same— Same— Beabrangbment of Words. 

The rearrangement of descriptive words in common use can- 
not clothe them with attributes not possessed when not so ar- 
ranged. 

On appeal. 

THADE-MABK FOR MEDICINAL PltEPARATIONS. 

Applieation for registration filed August S6, 1898, 
No. 56,413. 

Messrs. Fraley & Paul for the applicants, 

DuEiiii, Gomrnissioner: 

This Is an Appeal from the action of the Exam- 
iner in refusing to register the words " Chill Stop" 
as a trade-mark for a remedy for chills and fever, 
malaria, and intermittent fever. 

One of the propositions laid down by the Su- 
preme Court in Mill Co. v. Alcorn (150 U. S., 460, 
463) is thus stated: 

3. That if the device, mark, or symbol was adopted or placed 
upon the article for the purpose of identifying its class, grade; 
style, or quaUty, or for any purpose other ihah a iitgr&ace ia 
or indication of its ownership, it cannot be sustained as a valid 
trade-mark. 

The words here sought to be registered appear 
to me to fall within the condemnation above re- 
cited in that they express a quaMty of the article 
upon which they are used. (Johnston & Johnston, 
65 MS. Dec, 373.) At sight one would infer that 
the article so designated was intended to be used 
to stop chills rather than that the words used were 
designed to indicate ownership. It is doubtless 
trlie ttfat tSe Arrangement of the words is sonl^^' 
what different from the ordinary, and they do not 
express the quaUty in the most grammatical form. 
Theyare "eatchy"and "slangy." The usual order 
in which they would naturally be used is trans- 
posed and the phraseology is abbreviated. Still 
they remain descriptive as well as advertising. 
{Eas parte Brigham, 30 O. Gr,, 8B1.) 

The rearr^gement of descriptive words in com- 
irlon use cannot clothe them with attributes not 
possessed when not so arranged. The words ' ' Chill 
Stop" when applied to a remedy for chills and 
fever, malaria, and intermittent fever do not con- 
stitute a lawful trade-mark and are not entitled to 
registry under the act of March 3, 1881. 

Counsel in a carefully-prepared brief states: 



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The day of {Jiirely arbitrary trade-marks is largely passed. 
Eopecially is this true in ceitain trades which deal directly with 
the entii'e public, and where, if a mark or word is chosen for the 



purpose of connecting a certain manufacturer of goods with an 
article, it must contain enough of suggestion to bring it readily 
to the memory, or else be utterly useless either to the manufac- 
turer or to the public. 

I can hardly assent to this proposition; but be 
this as it may it is not seen how the action of this 
Office in passing upon the registry of words such 
as are here under consideration can be governed 
except by the act itself. The act mnst be first 
changed, or. in the absence of legi.slation. protec- 
tion from interference must be sought from ihe 
courts under the doctrme of unfair competition in 
trade so liberally apphed at the present day. 

The decision of the Examiner is aflflrmed. 








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UNITED STATES PATENT OPPICE. 



Ex parte Gunmer, Jones & Co* 



MS.D. , Vol. 66, Page 428. 



On appeal from the action of the examiner In refusing to 

register the word "CONGO" as a trade-mark for fabric linings, 

the Coramlssioner held as follows: 

•The United States Supreme court, in Mill Co. v, Alcorn, 65 
O.G. , 1916, stated that its decisions in trade-mark oases had es- 
tablished certain propogltions. Among them wc find the following: 

•*(4) Such trade-marlc cannot consist of words In oOTamon use 
as designating locality, section, or region of ooxintry. ' 

"This ruling must be considered oont rolling, and it certainly 
applies to the marX 'Congo,' for which registration is soioght, as 
that word designates a region of ooimtry. 

"The decision of tho examiner is affirmed." 

(Signed) C. H. Duell, 

Commissioner, 

March 31, 1899. 



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OOMMISSIONEE'S DEOISIONS. 



Ex PARTE MUIR. 
Decided March SO, 1899. 



On appeal. 

TRADE-MARK FOR CORSETS. 

Application of Ermn T. Muir for registration 
filed October 31, 1838, No. 56,756. 

Messrs. Elliott & Sopkins for the applieant. 

DtJELL, Commissioner: 

This is an appeal from the action of the Exam 
iner in refusing to register the words "America'rr 
Beauty" or a pictiire of an American-Beauty rose. 

The grounds of refusal are stated to be that the 
words "American Beauty" a.re anticipated by the 
registered Trade-Mark No. 2,377, dated April 13, 
1875, and that the words and symbol are not true 
alternatives. The second ground is the aU-impor- 
tant one as the case is presented and ■will be first 
considered. 

Applicant states that the essential features ofMs^ " 
trade-mark — 

are the words "American Beauty" or a picture of the Ameri- 
can-Beauty rose. 

The representation of the flower may be fairly 
conceded to be that of arose; but it is beheved 
that it would require a vivid imagination to come 
to any conclusion as to the species to which the 
rose belongs. I do not think that the pictui-e or 
symbol can be regarded as a correct representation 
of the well-known American-Beauty rose. 

Jt has been held time after time by this OfS.ce 

that a picture and words cannot be covered by one 

registration unless they are true alternatives. The 

principle is clearly enunciated in ex parte Adam 

Roth Grocery Co., (63 O. Gr., 315,) where it is said: 

It is also held, on the other hand, that there cannot be covered 
by one representation a word and also a picture capable of such 
a variety of modifications that two of the modifications might 
appear to be substantially different things to an ordinary pur- 
chaser. 

The picture of a rose and the words "American 
Beauty Rose " under this decision, as well as under 
the "Wliite LUy" decision of Assistant Commis- 
sioner Fisher, (ex parte J. D. Richards & Sons, 54 
MS. Dec, 435,) are not true alternatives, much less 
are the words "American Beauty" and the repre- 
sentation of a rose. I cannot agree with appli- 
cant's contention that — 

the name "American Beauty" at once brings to mind the rose 
so well known by that name and any other definition would be 
strained and far-fetched. 

Therefore I must hold that the representation of 
a rose and the words "American Beauty" are not 
true alternatives. In view of this holding it is un- 
necessary to pass upon the other ground of objec- 
tion. 

The decision of the Examiner is afBrmed. 



UITITE.O STATES PATEITT OFFICE, 



Ex parte James Carter & Co 



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IIS.D., Vol. 66, Pure 434. 



On appeal from the action of the examiner in KKfKxiKjK re- 
quiring certain portions of the statement to be canceled, the Coiunissio:]- 
er held as follows: - 

"The examiner's requirement for the cancellation of the clause 
of the statement reading "In practice v/e usually use the repre- 
sentation of two carters, which sugrests our nam.e 'Carters', but 
we claim, the right to use one or any number of carters", being 
correct, is affirm.ed. Kis other objections are overruled, and to 
that extent his decision is reversed." 

C. H. Duell,(Si — c'j^ 

' Comjnissioner . 

April 1, 1899. 



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imiTED STATES PATEIIT OFFICE. 



Ex parte A. J. Alexander, 



Endorsed April 4, 1899 



On appeal from the action of the examiner I'n refusing to 
rerister as a print a tr.ad.e circular or panphlet entitled "Por the 

MedicalJ Profession, Dr. A. J. Alexander's Anti-Moralcophine" , upon the 

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ground ithat the said print was not an artistic representation nor an 
intellcjctual production a.s is contemplated in the copyright act re- 
lating to the registration of prints and labels in the Patent Office, 
the Commissioner held as follows: - 



"Examiner affirmed." 



April 4, 1899. 



C . H . Duell , 

Comm.issioner . '' 



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BEADELSTCir & i;70SRS v. COOIffi BRLT/IIIG CO. 



Po-I. ^for. , Pago ;22y. 



The r;ord "ILIPERIAJ." held to be an invalid trade-mark 
as applied to a particular grade of boer. 




; RAY!.:oiiD V. tict; royal baking powdjcr go, 



?od. Rep. , ppgo 231. 



The word "ROYAL" hel-: t^ jo -^ vall^ trade-rv 
■O'vdor vr^en applied to the entire class of p-oodo. 



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UNITED STATES PATENT OFFICE. 



Ez parte Wilson & Thompson, 



MS.D. , Vol. 66, Page 482. 



Trade-Idark for Cough Drops, 



On appeal from the aotlon of the examiner in refusing to 
register, as a trade-raarK: for a remedy for ooughs, oolds, hoarse- 
ness and sore throat, the phrase "STOP THAT HACK, »» upon the ground 
of its descriptive and advertising character, the Commissioner 
held as follows: 

■Applicant's brief has been oareftilly considered. So long as 
the mark as presented for registration sets forth that the words 
'Stop that hack' fona a part of the essential feature of the mark, 
It Is not registrable. Registration is denied uopn the authority 
of ex parte EriPsham. 20 0,G. , 891, and ex parte Glance Brothers and 
White, 87 O.G. , 698. 

The decision of the examiner is affirmed." 

(Signed) C. H. Duell, 

Commissioner. 

April 26, 1899. 



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DESHIilG HARVESTER CO. v. V/HITI-IAH w BARIIES LIFG. CO. 



(Cirouit Court of Appeals, Gixt}: Circuit. Decemour 19, 1338.) 



1. TRAfiE-l-'AI^'vS ~ HOW CREATED ~ PURPOGE OP DESIGHATIOII. 

To constitute a tra-le-raarX, the m?-r]c or s;;mbol us(.!d imiot 
be designed, as its priin&ry purpose, to distingviish each of the 
articles to v/hich it is affixed froia liXc articles produced by 
others. If i'o is originally adopted for some other purpose, such 
as to designate the size, shape, and capacity of the article, so 
that any office it nay porfonii as a designation of origin is merely 
incidental, no trade-marlc right is acquired. 



2. SAIIE. 

In machines, s\ich ao reapers and iior/ers, vniioh have many 
detachable parts, subject to be \7orn out or broken, ■ the staiping 
or casting of iotterT and figures thereon, merely for the purpose 
of distinguishing them from each other, so that the user of the 
m.achine 7Tay "tore readily ordor them by letter or telegraph for pur- 
poses of replacement or repair, creates no trade-raaric rights in 
such letters or figures; nor is it sufficient to justify their 
a-c7;ropriation as trade-marks that they are found only in associa- 
tion T;ith t'-f^ m.achines of the particular manufacturer. 

30 F<v:.'7<^'^., affirmed. 



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Copy. 

Department of Just lea, 

Waahiiicton, D. C. 

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Doconber 2, 1898. 

. ■ * ■ if '. 

T]ic Prosident, 
Sir; 

I iir.vo tho honor to acknowlodce the receipt of your coia- 
launioation of IToveiiber P.Cth, enclosinc one from the Iiibrr-rlan of Con- 
nresa, who desires to know v/hether the inhabitants of Hawaii, Cuba, 
Puerto Rico, tuid Manila are entitled tc ro£;i;iter publications for 
copyright, axid if so, v/liethor as foroignors or as cltiaons or sub- 
jects of tlio United States. 

In answer, I have the honor to advise you a^ follows:- 

It appears that tho subjects of Hawaii had not, prior to tho 
passage of tlio resolution of annexation of July 7, 1898, become vest- 
ed by proolanation witli the privilege of copyright in the United 
States. I Imve heretofore held in an opinion, a copy of wJiicli is en- 
cloned }iorowith, tliat certain laws of the United States relative to 
tonnage duos upon vessels from foreign ports still applied to the 
ports of Hawaii, and had not been abrogated by the terns or effect of 
the resolution of annexation. For tlio reason given in that opinion, 
I think that the inhabitants of Hawaii are not at present, in the ab- 
sence of affirmative legislation by Congress to that effect, entitled 
to the benefits of our copyright laws. 

Puerto Hico, Cuba, and Manila have not as yet been formally 
ceded to tho United States. So far as they are subject to tho control 
and government of tliis country they are niled under the principle of 
belligerent right. Tiioy have not become entitled to the rights and^ 
privileges of cltir^ens of txiG Unitod States. In my opinion, when 
tlioy yhall have been directly ceded by treaty to the United States, 
and sucli treaty duly ratified by the Senate, their respective inhabi- 
tants will not bo entitled to tlie benefit of the copyrlgJit laws unloaa 



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t3ic treaty, by its tet;|rfs, confer such right, or Concross shall aftcr- 
v/ards extend such laws to tJie inhabitants of those countries. 

;ilf auy iniiabiitants of Puerto Rico, Cuba or t}iG Philipine 
Islands clr.im ^he priviloge of copyright as Spanish subieots, that 
right at present 13 subject to the well-known rule that hostilities 
between the two nations suspend intercourse, and deprive citlr.ens of 
the hostile natibhs of rights of ai: international character previously 
enjoyed. I ara of opinion that so long as a stato of war exists between 
Spain aiid the "United States, Spanish siibjects have no rlgJit to tlie 
privilogGS of obpyricht conferred upon Spanish citizens by proclanation 
prior to the declaration of war. 

Wlien a treaty of peace shall have been finally concluded, 
their rights 1^111 be doterrained either by the provisions of the treaty, 
or if the treaty bo silent, it will be oompeteiit for the United States 
tJirough itn executive offlcGrc, to resune the exercise of such righto 
a^id privileges as previously existed and have not been definitively 
declared terminated. So that if tiio treaty of peace bo silent with 

reference to copyright, it \vould, in my opinion, bo entirely proper for 

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t]'0 Librarian of Congress to admit Spanish subjects, after the conclu- 
sion and ratification of the treaty, to the sojne copyriglit privileges 
txiat they enjoyed prior to the deg^laration of war. 

Very rospectfiilly, 

(Signed) John W. Griggs, 
Attorney General. 



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XPSVSm ST/TSS PATENT OitPICE. 



Ex parte/ George Fred Terry. 



MS.D. ,Vol. 67, Page 14. 



Appll<3atlon filed PetoTuaxy 10, 1899; serial No. 57,654, 



On appeal £rom the aotlon of the examiner in refusing to register 

the word-symbol "TONIKO* as a trade-mark for a remedial agent, 

upon the ground that tHe word is descriptive in character, being a 

word in a foreign language meaning a tonic, the Commissioner held 

as follows: 

"The decision of the exsaniner is reversed. See H. K. 
PairhanK Co, v. Central LArd Co., 70 O.G. , 635; Am. Grocery Co, v. 
Bennett et al. , 71 O.G., 1770; Sleepy lye Milling Co. v. Blank© 
CO., 85 O.G. , 1905. » 

(Signed) C H. Duell, 

Coiamissioner. 



May 6, 1899. 



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UNITED STATES PATENT OPPICE. 



Ex parte The Pay Mfg. Co, 



MS.D. Vol. 67, Page 64. 



Applloatlon filed September 14, 1897; No. 54,279. 



Trade-Mark for Bicycles. 



"I entirely agree with the examiner's stateraent that the words 
'OUR LITTLE ONES,' adopted by applicant for use In connection with 
juvenile "bloyoles and tricycles, 'Indicate that the said bicycles 
and tricycles were either (1) little bicycles and tricycles, or 
(2) bicycles and tricycles adapted for use by children,' 

I also agree with his conclusion that 'In the first Instance 
they would appear to Indicate the grade or style of the bicycle 
or tricycle. In the second Instance they would seem to be used 
to Indicate a quality of the bloycle or tricycle. ' 

The decision of the examiner in refusing registry for the 
words 'OUR LITTLE ONES,' Is therefore affirmed." 



(Signed) C. H. Duell, 

Commissioner. 



Uay 16, 1898. 



30 



l"']Tr- ":\\7i'S PA^ 



Ex part 6 Charles Tr , Peiiiicv 



MS.n. ''ol. 67, pare 83. 



Application filed Repteraber 26, 1898; ITo . 56,567 



Trade-Mark for Ilediciiial Remedies. 



On appeal from the action of the eKPjnirier in refusing to 

re.rister r,he representation of a flag and the v/ord "Cuban", the flag 
beii]g the Cuban flag, as a trade-mark for a medical compound, upon the 
ground that the v;ord "Cuban" is reorraphical and the flag public in- 
signia, the Commissioner he.ld as follows: 

"The decision of the examiner of trade-marks is affirmed. 

C. K. Duell, 
i.Iay 19, 1399. Commissioner." 






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UlTITED STATES PATEITT OFFICE. 



Ex i)art£ Sedgwick, Jr., et al 



Endorsed June 2, 1899. 



On appeal from the action of the examiner in refusing to 
register a label entitled "Rival" for hack saws on the grounds that the 
label was neither an artistic representation nor an intellectual pro- 
duction, and involved in its creC:ation nothing beyond the expected 
skill of an experienced Jrype-cetter, the Cormnissioner held as follows: 



"The decision of the examiner is affirmed." 



June 2, 1099. 



A. P. Greeley, 

Assistant Commissioner. 



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-0-iT iiur^oaf-IecTfii tiB ion cioicfxicfneaoiqo't 
;3WoIIot 3XJ Mod Tonoxsainimor ,T9^croa-9qY« ^■" 



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UlTITED STATES PATMTT OFFICE. 



Ex parte Adolphe Hignault. 



MS.D., Vol. 67, page 135 



Application filed llovember 5, 1898; ITo. 56,899 



Trade-Mark for Blood Purifying Pills. 

On appeal from the action of the examiner in refusing to 
register the word "Como" as a trade-mark for blood purifying pills 
on the ground of its geographical significance, the Commissioner held 
as follows: - 



"In ex parte Little & Co., (85 0. G., 1221,) the rule to be 
followed by the office in regard to trade-marks having a geograph- 
ical meaning is thus stated: 

"It being once admitted that a word sought to be registered as 
a trade-mark has a geographical meaning, it should be the rule of 
the office not to register such word unless it appears beyond a 
shadow of a doubt not pnly that its fanciful or arbitrary meaning 
is so generally known and understood that the meaning of the name 
would be at once recognized, but, furthermore, that the name 
could not be rightfully used upon the same class of goods by any 
one making them in the locality bearing the name.* 

This rule is fatal to applicant's contention. 

The decision of the examiner of trade-marks is affirmed." 



June 3, 1899 



C. H. Duell, 

Commissioner. 






690,55 .oK ;8e8I ,5 lecTineYoTT bell vxoilqqA 

• sill- -.rvr-f^trr; 



p-iilq gnXY'tiiwq boolcf lol :iiB0t-6ibfiiJ 'now ©riJ t& 

- :aYro.i- 

9cf oj el;- ,ISSI ,_ . CtctlJ 9 dfTfia; xs cl" 

autij si jirfxni59ni Isoi 

3B b8^8J^xv^;_ ,-_, ,.,, „, ,,„.. .,, ,, ,,,,.^ .,-.>;, J ,.•.l..^G oono :^tii.ed il" 

to alui ed) ed bluorf? j. . rrsofrt I,Go.*-n'q-.p.tnos'^ b cp.d TfTOfa-ebXJicf a 

B bnoYed ariBeqq aelrtij loillo erid" 

'.nirrcem \:i£T,f idTiB -lo xiniomit a-'x ixid^ -'ilnq .^on ocuob i; to v/oJbBrfa 

■'■' T &r::f lo sfllncam arfj ijBrf:^ booJatsbaxr bnJ3 nvroiiJl YXI-G*i©n8a oa si 

\:n>5 xd 3&003 lo asj^Io eno ;t bljjo-j 

• tindiitoo 5^ ittBoi i _ 
" .bmniltii :ttiisi~9biy -.xe ev. rtoiaxoab srlT 



35 



UiTITKD STATES PATHTT OFFICE, 



Ex parte The Celluloid Co 



LIS.D., Vol. 67, page 136 



Application filed February 21, 1899; ITo. 57,740, 



Trade-Ivlark for Collar Buttons. 



On appeal from the action on the examiner in refusing to 
register the pictorial representation of an eagle or the word-s>Tnbol 
"Eagle" upon the ground that the v/ord-syiijbol was not shovvn in the fac- 
simile, and upon the further groimd that the device shoNvn was a simula- 
tion of the coat of arms of the United States, the Commissioner held 



as follows: 



"The decision of the examiner of trade-marks i€ affirmed. 

Leave, however, is given to applicant to file a new fac-simile 
illustrating the eagle and the word "Eagle". If this drawing is 
accompanied by a proper amendment and a new oath, the examiner is 
directed to re-examine the application thus amendea. 



June 3, 1899. 



C. H. Duell, 

Commissioner. 



37 



TTTAT P.Ifi^ATS nfiTlTH' 



• 



MIL 13 vJ 1 J.JI.J A' 



oi anisrjlai ni lenlr.iGxe ed:;t no notitoB en'J- irto'xT: .Cfseqq.. 

lodmYs-biow en s>I:jse njs "io noio^B^tnosoiqaT loiiio^tDiq silt te^fsiaei 

-oxj"! sri^ nJt nwona ;?on sbv? locfip^a-ftiov/ sri^ jnrr.t f.Mtf, ■ _„ .. . ,.^ 'alaBri" 

-Glwmia B 8BW mvoria solvsb srfj Jiidj Iinwong larfc^tut sritf aoqu bnr. .alimia 

bl9rf tenoisBliTmioO 9ri;J ,39;tii:ra ho^ttrtn gr^j "io 3cv r to noi^ 

: awollol 3£ 

.b9fini:1lB ai 83ltBm-&{)Bi^ Io 'lenirtiBxe srfcf lo ciolaioob arfT" 

81x1-1113-0/51 W9a B elii oJ crtisojtlqqfi oJ nevla 3l jnevsworf ^avcgJ 

al i6ri.cnLSx& ^cUbo v/sn b b«B d-nginbrcaniB laqoiq b Y<f beJtnBqaioooB 

".bobrrefliB amft noicTBoilqqB art: SfttniBxe- osctDQiib 



. •xexiolaaixi.ifnoO 



.€681 ,o tm/L 



37 



3^ 



'^yr^':}-, 



','}W' ■ ow^'^";^ 



C 





r- 



^ 



UlTITED STATES PATEITT OP.t-^TCE. ,N'J^^- 



Ex parte Churchill & Alderi , 



MS.D., Vol. 67, page 156. 



Application filed April 13, 1899; No. 58,190. 



Trade-Mark for Shoes. 



On appeal frora the action of the examiner in refusing to 
rep-ister, as a trade-mark for shoes, "the representation of a shield 
surmounted by a crown and having thereon the words 'Ralston Health Shoe*", 
because of the descriptive character of the words "Ralton Health Shoe", 
no objection having been raised to the representation of a shield sur- 
mounted by a crown, the Commissioner held as follows: - 



"The essential feature of the mark sought to be registered 
seems to me to be the shield, surmounted by the crown, and pro- 
vided v/ith a panel. The panel is designed to afford a suitable 
surface upon v/hich any desired words may be printed or embpssed. 
Applicants show upon the panel the words "Ralston Health Shoe", but 
these words, while (illustrating a group of words which applicants 
use, are not in themselves registrable, fol:' the words "Ralston 
Health Slioe" are not susceptible of exclusive appropriation, and 
are therefore not a trade-mark. (Ex parte The Bronson Co., 87 O.G. 
1782.) 

It is thought that applicants by complying with the suggestion 
here made v/ill have a valid trade-mark, and that the courts would 
restrain the use of any words upon the panel, and certainly upon 
the doctrine of unfair competition in trade v/ould restrain a com- 
petitor from using the words "Ralston Health Shoe" upon the panel. 

It follows that the decision of the examiner of trade-marks 
must be affirmed, with leave to applicants to amend their statement 
as to the essential features of their claimed trade-mark." 

C. H. Duell, • 
.Tune 6, 1899. Coramissionev 



Ul'IITED STATES PATTOTT OPPTCE. 



Ex parte Central Oil and Gas Stove Co., 



MS.D., Vol. 67, page 157. 



Application filed March 8, 1899; IIo . 57,851 



Trade-Mark for Oil Stoves. 



On appeal from the actipn of the examiner in refusing to 
register the word "AUTOMATIC as a trade-mark for oil stoves on the 
ground tliat the i^ord is descriptive, the Commissioner held as follows: 



"The decision of the examiner of trade-marks is affirmed." 

C. H. Duell, (Signed) 
June 6, 1899. Commissioner. 



CIRCUIT COURT of APPEAI.S, Second fcuit 



April 4, 1899. 



T H M S IT V. B A T C H E L ij R-, 



93 Fed. Rep., 660. 



yfe^ 



The complainant seeks to make use F the principle stated in 
Singer Mfg. Co. v. June LIfg. Co., 163 U. S.169, - 16 Sup. Ct . , 1002, 
that if the owner of a patent had given to ts product a name which 
constituted its generic description, the r ht to make the patented 
article and to use the generic name passedio the public upon the ex- 
piration of the patent, and that, therefoJ, the exclusive right to 
use the trade-mark of the corset ceased w(h the life of the Lyman 
patent. In this case, the name ante-datel this patent by more than 
2 and one-half years, and the name, and ilt the patent, so far as can 
be seen, gave value to the article. Thetrucker patent was for an al- 
leged improvement in the old class of cosets, in which seams ran trans- 
versely, and was of no value. The LymaJ patent was for an alleged im- 
provement upon th© Drucker, in the same class of corsets. he 
corset was extensively advertised and vks a favorite, but whether its 
value was connected with the Lyman patint is unknown. 

Held: That the expiration of the patent did not terminate the ex- 
clusive right to use the trade-mark. 



r 



,\?FqqA -io THUOO TIUOHIO 



ifl J J ^JL.2_iL £^A-i-' 



■) H T 



.Odd t.qe/i .J^^ 



,^OfM ./rft)' '.crre dl - ,P5 , . ' ' ' ^'^ ' *'^^^'^ 

-xo MeaaBq 8mf>rf -^^ .. . . 

ot id-An 9v£8ifIox9 9r{o' .fot6i9rf^ ,tii^^ .icioiBq ©fiJ Ho n. 

I arf,^ lo e^il ericf riiw bosTigo ^teBioo on 

» 

aiirfj y^o^ \'o .trrecfxiq axrfct )9;t>ib-9*nB snmn orfj , asfiO airiJ nl 
nB3 Sii iB"i oa ,Jn&;rBq sri^J Jn bne ,9nii5rt oriJ bn^i (Stey^: '' 
-.G nB IO*? BBVv crrtscTiiq i9?{DutC 9rfT .gloicT'xiJ sriJ oJ »«If.v 9vsr« «riS^ 
r ■ • } fiB-i smiiea rioirfw ni ,8?9a'oo iQ aaisXo ..uivvunj. 

-rtrl .b9nsJ:i. ol sew Jrtscfr.q rnimY^I 9riT , eulBV orr to eBW bn 

T 9riT .8:f^8^0D lo sbbIo anuis 9r: .'loMoutQ erfiJ noqn 

itt t©ff;J9r{w ;turf , e,tiTOvjB't i3 3iw bnn bssij'fsvbs ^^I9vt8ft9jx9 3fi- 

--.0 Of(J ©;tflnJ:Rriu;t :fon o no i .+ ^s-r t qx -tarTT :bl ; 



r^ftijf:- y-^p^- 






±4. 



IIRP' 



UillTED STATES PATENT 0??TCE 



Ex p arte HEWS & B R \7 IT, 



MS.D., Vol. 67, page 136. 



Application filed Sept. 12, 1898; llo . 56,496 



Trade-Mark for Soaps. 



On appeal from the action of the examiner in refusing to 
register the word "PlJIvIICIlTE" as a trade-mark for soap upon the register- 
ed trade-nark of Stern, Ho. 17,557, February 18, 1890, the word "Purai- 
line" used on the same goods, the Commissioner held as follows: 



"There is such a similarity between the word sought to be 
registered and the registered mark that, in ray opinion, confusion 
or mistake would be caused, and therefore the decision of the ex- 
aminer must be affirmed. 

Upon the hearing affidavits wefe presented tending to show 
that the registered mark is dead. The proofs of this, however, are 
insufficient. It does not .appear that any attempt has been made 
to communicate v/ith the registrants. The affiants tire all from 
Chicago, and it may well be that what is unknown .in Chicago is 
known in other cities. If the registered mark has been abandoned 
it ought to be shown witli com.parative ease. 

In order to give applicants an opportunity to submit further 
proofs, the exaininer is authorized to consider and pass upon such 
proofs, if any, as may be hereafter submitted." 



C. H. Puell, 



June 5, 1899. 



Coramiss ioner . 




UITITED STATES PATENT OFFICE. 



%9^- 



Ex garte Newton Steel Cut Millinf^ Co. 



^ -w . , 



MS.D., Vol. 67, page 192. 



Application filed Feb. 18, 1899; No. 57,718, 



Trade-Mark for Cereal Pood. 



On appeal fro:n the action of the exaniiner in refusing to 
register the words "GrandMa's Wonder" as a trade-r.arit for certain 
narned flours and foods upon the registered trade-niark of the Daisy 
Roller Mill Co., No. 25,161, August 21, 1894: the word "V/onder" for 
Wheat flour, and upon the descriptive character of the word "GrandMa's", 
the Commissioner held as follows: 

reflectlnr't'"^'*"'''''-'--^ considered appellant's brief, but, after 
In ItselT; ^ ^°"^trained to conclude that the w^rd "Grandma's" 
mar^ oi «. °"' I' '''''' catchwords, the use of which as ^ trade- 

pr'ssed bv thpT; "."^'"'°'' '"'"^^ "'^"^" ''^' condemnation ex- 
GlobrpJ Circuit Court of Appeals in- Proctor & G.mble Co v 

to L^ f ^'°;» '^ ''"'• ^^P- ^^'' ^°^ ^he ouotation refe;rld 
to, see ex garte The Bronson Co., 8!? 0. G. 1782-^ reierred 

affirmed'. ''''''°" °' "^' '"'"^'"'^ °' tradelmarks 'is accordingly 



June 16, 1899. 



C. H. Duell, 

Commissioner, 



■'■'■, '..j-,.i;'!*a 



'■!P&:i 



Mi'', 



.MOT'^iTO TTH^TA'T 3(!ITATR aSTTTTIU 



, . oO grtillxijl iuO 199^2 nooweH aJtcg xg 



.261 93Bq ,VS .loV , . a. 8M 



,8IV,va .oK jeesi ,8I .dg-i balxl noi^colIqqA 



.boo'5: Ir^sieO toT: jltBM-gbr.TT 



oJ §;iX3i;l9-£ nx Tsnxr.^nxo 9f(^ "io rioxctos orfj mo'il Ix59qqB n 

ni£5*i9o lol ^Bin-sbBiJ b 8B "TSbnoW s'sMbriBnO" abTow 9 

YsxbCI 9ri^ lo jIiBsi-sbBict b9i9J3xn9i grfj rroqu abool bfia 3 

-rot "i9fonoW" blow edi li^esi ,IS ^tawawA ^Ldl^dS .oil , . oO 

,"3 'BMbasif)" bTov/ 9i-f:t "io 'ractoBtBrio svij qxioi89b edi noqu bna , 

•.BwoIIol 8B bLsii ignoi; 



igJ'lB tCfucf ,1eitd 3* ;>rtx;Il9qqB b9i9biBnoo ^:IIuT:9'ibo 9VBri I 
"3 'BmbriBiO" biovr odi iadi abssLonoo oi b9itJ:BTJ3noo eib T ^nold" 

-abBti B 3B riolrfW lo 93U 9ri;t ,3blOWrf0JB0 930r{J ^o 9no si lis 

-X9 fiol jBnmebnoo adi nxrfjxw bIIbI ,'5:o9"r9;{;t nox^Tioq b sb to 
.V . oO 9lcfm.OT3 & loJooiST nl siBeqqA "io JijjoO JiuoilO 9riJ vd b 
b9Ti9l9'x noiiQioiJp ddi to"? .VaS , . q9H .bel SG , , oO gnxnllgH 

\S8VI ».-iD .0 S8 , . oO nosno-xH. erfT 9JiBq X9 9 
"^lanibTOooB si STl-fBrn-gbBi.t xO T9nx:ur.x8 ed) lo nolaxogb ed 

. b9 

jll9x;a .H .0 

.•YMfro ^P■-'.xfTlmoO .eeSI ,3 



4o 



fai 



I9i. 



'■ ,?•' 





45 



UHITED STATES PATENT OITTCE, 



7 

X ■■ 



Ex parte central OIX and Gas Stove Co. 



^7 
HS.D. Vol. 86, Page 187, 



On motion tor re-)iearlng| the coraalssloner held am follows: 
^\ 
*The petition Tor re-hearing Is denied. Attention Is 
oalled to the faot that it Is ooomon praotloe to refer to oll-stoves 
as 'A Automatic,' and to so name them. See United States patent 
Ho. 624,880, Hay 9, 1899^ for an autcsaatio oil-stove.* 



(Signed) C. K. DuelX, 

commissioner* 

Jnne 15, 1899, 



^^^,1A^,S7r.r^ 




(!f"??r ■"-^■■',':!3 



^ 






UNITED STATES PATENT OFFICE. 



Ex parte Churchill "c Alden, 



follows: 



MS.D., Vol. 67, page 207 



Application filed April 13, 1899; No. 58,190. 



Trade-Mark for Shoes. 



On petition for a rehearing, the Coranissioner held as 



"Petition for rehearing denied. The registrations referred to 
in petitioners' brief were granted during the terra of one of my 
predecessors. Lly action in this case shows ray views as to the 
propriety of the registration of such alleged trade-marks. I do 
not term the prior registrations "mistakes of the office". The 
policy of the office in reference to the registration of trade- 
marks was changed a year before this application was filed." 



June 22, 1899 



C. H. Duell, 

Commissioner. 





47 



UNITED STATES PATENT OFFICE. 



Ex parte Dennett Surpassing coffee Coiapany. 



MS.D. Vol. 67, Page 212.. 



1 



On appeal from the action of the examiner in refusing to 

register the word "SURPASSING" as a trade-mark for liquid coffee, 

the CoitDnissioner held as follows: 

"My decision in ex parte The Bronson Co., 87 O.G. , 1782, 
which I see no reason for changing, disposes of the first question 
raised by this appeal, in addition thereto, attention is called 
to the decision of the United States Circuit Court of Appeals for 
the Seventh Circuit, in Illinois Watch Case Co. et al v. "Elgin 
National Watch Co. , which will be published in the Official 
Gaze^tte of June 27, 1899. 

X^Tne only other question for consideration is whether the word 
'surpassing' is descriptive. Two examiners of trade-marks have so 
held; similar words have heretofore been refused registration by 
the office; one of the admitted definitions of the word is 'emi- 
nently excellent'; and the courts have repeatedly condemned the 
attempt to use similar words as trade-marksC^4as evidenced by the 
oases referred to in The Bronson Co. decision. The word as ap-clied 
to coffee is clearly descriptive," 

(Signed) c. Jl, Duell, 

Commissioner, 



June 22, 1899. 



^-^.svs-un- 





48 




UlTITED STATES PATMTT OFFICE. 



Ex jparte Charles E. Raker, 



Vol. 67 MS.D., page 253. 



Application filed May 22, 1899; serial nO/50,510, 



Label for Medicine. 

On appeal from the action of the examiner in refusing to 
register a label entitled "OzenO", used on medicine, upon the ground 
that it vras neither an artistic representation nor an intellectual 
production, and that the word "OzenO" was mere trade-mark matter, the 
Commissioner held as follows: 



"Registration was properly refused for the reasons fully set 
forth in the examiner's statement. 

The decision of the examiner is affirmed." 



June 30, 1899. 



A. P. Greeley, 

Assistant Commissioner. 



'. i^'^'iiitAj&i .. .J 




5i'!5«B^:, ■■^" ■ ■■•™?yi 




UNITED .STATES PATEIIT OFFICE. 



Ex parte Central Oil and Gas Stove Co., 



Vol. 67 MS.D., page 254. 



Application filed March 8, 1399; ser. ITo . 57,851 



Trade-Mark for Oil Stoves. 



49 



On a motion for re-hearing, the Commissioner held as follpifs; 

"My reason for affinaing the decision of the examiner when the 
appeal first came before me was that the word was descriptive. I 
still believe it to be descriptive, and therefore must deny the 
motion for rehearing." 



July 3, 1899. 



C. H. Duell, 

Commissioner. 



mM^f'^-^- 






ou 




V 



/A 



HATIOTTAL BISCUIT CO. v. Honry D. aHOSR -^c Ano, 

U. S. Circuit Court, Southern Diet, of Kew York, 

LaCoEbe, Circuit Judge. 
The word "IXAHTA- held b3x\ infrinseraont of the word •UN-.EDA- 
as a trade-mark for bl8cuit. The word -nUT^BA- held to be a proper 
trade-murk . 




NATIONAL BISCUIT Co.,Y. Albert V. Thomas & Robt V. Clark©; 
U. S. Circuit court. Southern Dist. of IllinolB; 

Kohlsaat, District Judge. 
The word *m?mk* held tc, be a valid trade-mark, and the 
word "UVAFrA** held to be an infrinceffl^^^ thereof. 



t^ 



In Coleman, Burthen & Warth«n Co. v, Dann«nb«rg Co., SO S. B., 639, 
it waa held that where certain shows were stamped "Old Colony Shoe Co., 
Rockland, Mass.", and there was no such coaqpany in existence and th« 
shoes were not manufactured in Rockland, which is a city haYing a 
reputation for the xaanufacture of fine shoes, that the firm originally 
using such trade-mark were not entitled to protection In its u«e sinee 
it had a tendency to deceive the public. 



Xn Clark v. Aetna Iron Works, 44 111. App., 510, it was held: 
"The words 'Aetna Iron Vorks' imp«rt a eerporation, and a co- 
partnership eannsfc have no property therein as a trade -name . " 



// 



^ 



In Joseph v. Ifareowcky, 96 Cal., 518, it was held ag follows: 
"Ho relief where the claim to the exelusive use of the trade- 
mark contains a fait* representation calculated to deceive the public 
as to the manufacturer of an article", etc. 



In Raymond v. Royal Baking Powder Co., 6ft Jed. R»p., 2S1, it was 
held that - 

"no right is acquired by use in a label and trade-mark which 
speaks an untruth whereby the publie are misled, as where it states 
that the article is prepared in Irf>ndon by a firm named as Purveyors to 
Her liajesty, whereas, in truth, it is prepared by an entirely different 
tins in New York." 




>/d 




UNITED STATES PATENT OFFICE. 



Ex parte Charles E. Baker. 



MS.D. Vol. 67, Page 437. 



LABEL. 



In the natter of the application of Charles E. Baker for 
registration of label, filed Llay ??S, 1099, No. 58,510. 

On petition for reconsideration of the Goinmissioner's deci- 
sion refusing registration of the label entitled "OzenO", it was 
held as folloT/s: 

"The grounds stated by the examiner for refusing registration 
being sufficient to warrant such refusal, it is unnecessary to 
consider the various questions raised by applicant's attorney. 
Reconsideration is refused." 



(Signed) A. P. Greeley, 

Assistant Comnissioner, 



September 8, 1809. 



'^t' 





''%ES|^;^svi 



■..r ■. 



53 



UNITED STATES PATENT OFFICE, 



Ex parte R. A. Stowell. 



Endorsed August 3, 1899. 



Label. 



In the matter of the applioation of R. A. Stowell, #58,530, 
filed May f?4, 1899, for the registration of a label entitled 
"OREGON HAIR TONIC", the CoiTnaissioner affirmed the action of the 
examiner in refusing registration of the same upon the ground 
that the label v/as neither an artistic representation nor an 
intellectual production, and involved in its creation nothing 
beyond the expected skill of an experienced typesetter. 




r-?' 
^»^' 




UNITED STATES PATENT OFFICE. 



Ex parte Bolles. 



MS.D. Vol. 67, Page 455. 



Trade-Mark. 



"Sinoe my decision in the ParXer, Holmes & Co. case, I have 
given considerable more study and consideration to the propriety 
and legality of treating non-registrable matter as a part of the 
salient features of a valid trade-marK. 

"In the case now vinder consideration it is admitted that the 
word 'Bolles' is a surname and the v;ords 'Revolving Sash* de- 
scriptive, and therefore hy themselves not registrable, as they 
are not v/ords that can be exclusively appropriated. The salient 
feature of applicant ' s mark is the representation of a vandov/ 
frame arranged as shovm. The vrords add nothing to the mark, and 
should be omitted from the statement of the salient features. 

"Attention is called to trade-mark No. S3, 458, September IS, 
1899, which is though^ to be an excellent guide for marks of this 

character. 

"The examiner has correctly set forth the statement of the 
salient feature that is allovmble. 

"As presented the decision of the examiner is affirmed." 

(Signed) C. H. Duell, 
September 12, 1099. Commissioner. 



«* 



*,^ 




UNITED STATES PATENT OPFICE. 



Im 



f 



55 



Ex parte Luyties Brothers, 



MS.D. Vol. 67, Page 456. 



Trade-MarX. 



On appeal fron the action of the examiner in refusing to 
register the word "IINDERBERG" , on the ground that it was an 
ordinary surname and not the exclusive property of the applicant, 
the Commissioner held as follows: 

"I do not deem the proof sufficient that the mark for which 
registry is sought is a mere surname. It appears that the mark 
5ias been in continuous use by applicants for over thirty years, 
and it is stated that it is used 'in a purely arbitrary manner 
and solely as a designation of goods handled by them, and without 
any reference whatever to the name of any person. ' 

"In considering the subject of geographical v/ords I have said: 

•I do not think that merely because a word appears in the 
Postal Guide as the name of a Post Office, it acquires such a 
geographical meaning as to prevent its adoption as a trade-mark, 
when it has a primary significance not geographical. ' ( Exparte 
Little & Co., 85 O.G., 1085.) 

"No more should a ?/ord v/hich appears four times in the direct- 
ories of three large cities, covering several years, be considered 
as barred, when the word has been used as a trade-mark for more ■"^. 
than twenty years before the name is shovm to have appeared in any 
directory and where there is nothing in the application to show 
that it was originally adopted because of its being any one's 
surname. There is sufficient doubt in this case to warrant the 
registry of the mark. 

The decision of the examiner is reversed. 



September 11, 1899. 



(Signed) C. H. Duell, 



^s^ /P'JT'6^C 



Commissioner. 



r^' 



-\>)^ 




UlTJTEn STATES PATKNT OFFICE. 



Ex parte JERTIAIT, PPLUEaER & KUIOmiSTED Co. 



MS.D. Vol. 67, page 470. 



Trade-Murk filed Jan. 19, 1899; No. 57,479. 



On appeal frod the action of the Examiner in refusing to 
register "the word Deans and the scroll design, crossed by the diagonal 
bar" as a trade-mark for cough drops, on the ground that the word 
Deans is an ordinary surname find that the scroll design crossed by the 
diagonal bar appears to be merely a vehicle or border for the descrip- 
tive words used by applicant, viz., "Mentholated Cough Drops", the Com- 
missioner held as follows: 

"The examiner's action in rejecting this application appears to 
me to have been correct. The word "Deans" is a common surnsjiie - 
so common that it cannot be successfully denied. Granting that the 
word signifies an ecclesiastical dignitary or college officer, its 
common use as a surname has made the earlier meaning a secondary 
one. The word "Smith" had a similar significance at one time, but 
, of course that has long since become a secondary meaning. 

A scroll design, crossed by a diagonal bar, when clearly pre- 
sented, is doubtless registrable, if new. It seem.s to me that 
were the descriptive words "Cougli" and "Drops" eliminated, the 
scroll design v/ould be destroyed. 

If the scroll desigia, when the descriptive words are omitted, 
is sufficiently distinguishable. It is thought that such scroll 
design, crossed by the diagonal bar, would be registrable. 

Applicfmt is given leave to present a new drawing, showing 
such figures and omitting the surniime and all descriptive words. 

'jphe decision of the examiner is affirmed." 



September 14, 1899. 



C. H. Duell, (Signed) 
Coram.issioner . 




'■v^mrmmF'- 



'W' .57 



UjMited states patent office. 



Ex parte George A. Nevman Co, 



MS.D, Vol. 67, Page 471. 



Tra:ie-:'!ark. 



On appeal from the action of the exair.iner in refusing to 
register the words "GLYCO PHOSPHO CALISAYA" in connection with the 
word "mvi,[AN«S% upon the ground of the descriptive character of 
the words, and upon the further ground that the word "JIEmiAN'S" 
is an ordinary surname ard the salient feature of the applicant- 
name, the Commissioner held as follows: 

"It does not seem to me that this case falls within the line 
of cases referred to in applicant's brief, where a coined word 
suggestive but not descriptive, has been held to be a lawful ' 
trade-mark, if applicant were seeking to register the word 
Glyco" the contention would have more weight. This to an extent 
might be true if "Glyco-Phospho" as a compound coined word were in 
(jue s X i on , 

"However, as presented, the case falls within the authority 
of e x parte Spayd, 86 O.G., 631, and therefore the decision of 
the examiner is affirmed." 

(Signed) C. H. Duell, 

Commissioner. 
September 16, 1899. 



5 



T 





59 



■ I-tW e^'rB^g xa 



08fj eji 



• i-ov .0. .^M 



02V, - - ' if?<?8x ,21 9rn;T. f,o/ 



't!0 'fabwci V'-fb £ '!o2 >[*Tj;;r:- 



"saoja iio'fl" 



u/Jxin 



-HOfSisft 



- xan Tear ' ■: 






2!aioicrJ;in .bBStiQastq, 3 A" 

l-fesartlTl-i 2x n-oistoQb sin hirs; 



;« -.e'lTo 






■-■" . 'i-a. i .i.j,-. 4. ; .J j.eiu 






M^' 



UITTTED STATES PATKITT OP^'ICE, 



Ex p_arte William "M. Fev/ton, 



MS. D. Vol. 67, page 480. 



Application filed June 12, 1899; TTo . 58,720 



TRAI-)E-I.'IARK . 



On appeal fron the action of the examiner in refusing to 
register the words "Iron Stone" as a trade-aark for a dry powder com- 
fSsiSiGH- posed of a mixture of several kinds of clay pvilverized and 
designed for stove lining, upon-the grounds that the- v/ords were de- 
scriptive and indicated the character of the composition as applied to 
stove lining, the Commissioner held as follows: 

"As presented, the criticism of the exRm.iner is well founded 
and his decision is affirmeiS. 

Upon the hearing, hov/ever, it appeared that the proposed trade- 
mark was used in connection with and as a trade-m.ark for pulxerized 
material. I am, of the opinion that the words "Iron Stone" consti- 
tute a lawful trade-mark for a pulverized m.aterial. The words 
v^hile suggestive are not descriptive. It is suggested that appli- 
cant cancel the drawing and substitute therefor one upsn which only 
the words "Iron Stone" appear. The specification should be am.ended 
by om.itting all reference to the uses to which the dry powdered 
material may be put, and preferably should refer to it as a dry 
powdered or pulverized m.aterial. 

It is thotight that when these requirem.ents have been com.plied 
v/ith the mfirk will be registrable." 

C, H. Duell, (Signed) 
Com.raissioner . 
September 21, 1899. 



>^*. . M,\. 





7 



UNITED STATES PATEHT OPPIGE. 



Ex parte P. I.. Daggett £: Co, 



IIS.D. Vol. 67, Page 48S. 



Tradc-IIark. 



On appeal from the action of the exanincr In refusing to 
register v;hat is claimed to be a signature - "DAGGETT'S", together 
v/ith the vrord "OPvAlTGEADE" , upon the ground that the v;ord "ORANGE- 
ADE" v;-as descriptive and anticipated; and upon the further ground 
that the alleged signature tvas not a signature, but merely the 
salient feature of applicant's name in script letters, the 
Commissioner held as follov;s: 



"The real question in issue is as to the registrability of 
the name 'Daggett's' in the form presented. It is stated as 
'the signature "Daggett's".' Nov,' if it wexe the signature of the 
applicant firm, or of one of its members, it would doubtless be 
registrable. It is stated in the brief to be a ' f ac-simtile of an 
autograph signature.' The facts hardly bear this out, for it is 
admitted that it is not the fac-simile of the signature of P. L. 
Daggett, but the _fap -similo 'slightly changed, for the purpose of 
making it a little more fanciful.' In other v;ords, it is a com- 
posite. It is the joint work of LIr. Daggett and the artist. 
It is not the _fac- simile of Ilr. Daggett's signature, and on the 
other hand, it lacks sufficient elements of 'singularity of forma- 
tion' to ^-arrant its regis t rat ion.^>s 

"The examiner was correct in rejecting the v.-ord 'ORANGEADE.' 
"The decision of the examiner is therefore affin-ned." 

(Signed) c. :-:. Duell, 

Commissioner. 



September 21, 1890. §j;^ .^4^^ 5^^ ' ^'^ 



%_» 



h 









UNITED STATES PATEIIT OFFICE, 



Plx parte Herman Bartels, 



MS.D., Vol. 67, page 490, 



Application filed July 1, 1899; No. 58,892 



Trade-Mark. 



On appeal from the action of the Fixaminer in refusinpc to 

agister the word-symbol "Malt-Vitaline" as associated with an arbitrary 

ymbol , upon the ground that the mark was so nearly like certain 

agistered marks in which the words "Vita-Mait" and "Ivlalt-Vivine" are 

laimed as a part of the essential features, the Comnissionjpr held as 

Dllows: 

"The decision of the examiner in refusing to register .he mark 
as presented was correct and is affirmed. 

At the hearing it was suggested by applicant that the salient 
feature of the word symbol was "Vitaline". If the specification 
bo suitably cimendod and a new drav/inj; filod omitting the descrip- 
tive word "Malt" and the phrase "a highly concentrated extract- of 
malt", the mark may bo registered, unless the examiner finds riev/ 
references." 

C. H. Duell, 

Commissioner. 
September 25, 1399. 






bi. 



CIRCUIT COURT, D. JTew Jersey. 
Bradford, District Judge, 




kugxjst 5, 1899, 



BASS, RATCLOT & :-flRSS.T<JW,.itd . . v. CHRTSTIAl^T 5-EIGEJT3PAIT 

'~'yr of 



Ul-;r- 






1 . TRA.OI]-L.IiVRK } IrJPRII.TxKIvnSyrT . 

"The Complainaxifs trade-mrk for pale ale, consisting 'of ar. eaul- 

rea,_ is irifrii,,iod by tne aefyndc-mf s niark as applied to pale ale 
and nalf-a.,d-half, cor.istin.r, of a combination of a red ? r We 
nearly equilateral, a narrow £old border surr-^;T[^I^i^:-~^^, J^^^^ 

«^«%?°"°-^,.''''''^°^^^ ""^ '^^ ^"***^« ^5 ^"^ ^ in t;he middle, and 
some flae scroll ornamentation in each comer. « «» ana 

2. SAME ^ EVIBEIHCE. 

„."rr3^^^°''^?.°°* ^'^ ^^^""^^ ^^ recognize in favor of a trade- 

inc..]r irfrir..:8r fine distiTictiors betwee:,- different articles of mer 
chandise of ihe saxae gsneral nature, and should resolve a.-c Jaat the 
wrongdoer any fair doubt whether the public may or mav nof be de- 
I'^rtl /t ^t^ application Of the epurloua symbol; and hence 
™:iv lit T J^^^-^^-^-h^^^ «"«t, as agamt an infringer of a ?rade- 

??!. ff. ! ^^r'*'*' ^^ '^•^**'* ^^ "'^^^ ^i^"<^^« substantially sim- 
ilar to each other and belonging to the same class. 

5. SAI,IE - LIABILITY TO DECEIVE. 

"No one who has counterfeited a Ucitimate trad^.r:.-rk .-.nd ov^^Hed 
llL?J'^iT/V^^''^ ^" competition with the genuine can avoid the 
charge of Irfrlrp-emsnt by showing that the false mark h... j. nr^c- 
tice Dew 80 acooapanied, on labels, capsules or otherwise, by ' 

tri.d&-T,aF.6c, desi-i:f.,ion-, descriptions or other accesr^or^es , not 
forraing part of it, as to render it unlikely that the public has 
been deceived. Such a showing, while it nay affect the nature or 
measure of relief to be granted, cannot defeat a suit for infringe- 
ment . * 




l,L.Mi^.i.:^l^!m' 



,R teoris ,TBqarr9:nex'? .v aoii^-i^) c* ^tllo.-t -.H ,83j^,fl 



I 



.TICTTOTTTTT.TrT _ ^lAB 

1o jft^i'i eviaJJloxe 'iHcf j;,axJj^Ioiv "ferlu-ii;! motI JjooiiJVtJ'Ki oJ art 11 
•d ;tort blworie eri bfiB ,Iodiav8 enJtmiea eriJ 1o ^«xo■'^<Ira9 Iw^wbI ertJ 

x6ioe^.orio 3nl\;"C£iV lo aeitoseeooB ri;tlw TlfBia •bIjbI riox/a lo asu eriJ nl 

,I^viT: saanxsu.i ..> 'J:o paOuauo oxlo riuJfiloXi'i 'io o?;ui|'ij;q sldiiob 9i{^ rfJl'.v 
lo seoneupiBtjoo ericf moil tlt^sfalri srxlblelria »fa.tj 9««9 ©dd" 4J* foiii. 




4 ante 



62 



V.-^V'' 



■'\fy 



^^■' 



United States Patent Office. 



The Joseph Banlgan Rubber Company v. Lyman 0. Bloomlngdcile . 



Trade-Mark for Rubber Shoes. 



Reference . 



MS. Dec, Vol. 68, page 50. 



Application of The Joseph Banlgan Rubber Co., filed March 30, 1899, 

xlo. 58,055. 
Aprllcation of Linoan G. Bloorinndale, filed Axxrust 13, 1098, Jlo . 56,371. 



Messrs. Joseph A. Miller & Co. for The Joseph Banigan Rubber Go. 
Mr. Otto Horwltz for Bloomlngdalo . 



This cas« ooaes to me by reference from the examiner of in- 
terferences upon the followini;!; stc.te of facts: 

The Interference was declared between an application of Ly- 
aan Q. Bloomingdale for the registry of the words "Aaericfin Volunteer" 
for men's boots and shoes, and an application of The Joseph Banigan 
Rubber Company for the registry of the word "Voluxiteer'' :'or overshoes. 
The issue vras stated to be "The word 'Volunteer' fox- overs!. oes" . 

It is apparent that the Issue in respect to the olass of 
goodz is np.rrovier- than the class of goods upon which Bloomingdale uses 
his rasrk, and under the rule In S. Hem8hein,Bro8 . & Co., Ltd., t. J. 
H. Hargrave & Son, 81 0. d., 503, there has been such irregularity in 
declaring the interference that it should be dissolved. It appears. 



tf 



So». Banlgan Rubber Co. v. Bloomingdale . 

however, that the parties have taken testimony and that the case h^ts 
been submitted or; fla^l, hearing, in view of which, ejpsL.pf the undlaPtt-tJid 
faots disclosed by the record, It seems to me that no good purpose 
would be subsarved by directing the examiner to, rfd:9.olp.r».. the inter- 
ference . 

The record discloses that Blooiiingdale , the..§enior party, 
appropriated the mark "Araerican Volunteer" and has used the samo xipon 
men's shoes since about July 28, 1398, and that the Junior party, the 
1^ Joseph Ba.nif;an Rubber Coiapciny, adopted and ufjed the vrord "Volunteer" 
on rubber overaho^a, known as "Arctics", about January 1, 1899. Bloom- 
ingdale having used the words "American Volunteer* in connection with 
men's shoes, before the Rubber Company used the word "Volunteer" in con- 
nection with overshoes, is clearly entitled, a? betv/eer) ti-- tv/o,, <-o 
he.ve his mai-k registered. Whether or not the Joseph Banigan Rubber 
Company is entitled to have its mark "Volunteer" registered for use 
'-^:i.n connection wiish overshoes knov/n to the trade as "Arctics" seems 
to me to be an ex parte question to be detsrnined in th.= first in- 
stance by the examiner. Under the undisputed facts, as d inclosed by 
the record, the Joseph Banigan Rubber Co. Is In the same position as 
though Bloomingdale' 3 mark had been registered prior to the applica- 
tion of zho Rubber Company for registry of its mark. As against the 
Rubber Company, Bloomingdale ' a mark belongs to the prior art. 

The facts are now before the office and can be utilized, aa 





r 

. elBbgnimooia .v . oO nedcfuH nflglniiS . «ot 

sjjr: 98B0 eri;^ i&^.i fcrifl vnoralitaait nesta* ovjsrf eal^riBq eriJ ^Bff;t ,ts 
be;tjjq3lbnw arf* 1o bna rfolriw to w©iv nl ,snlifl9fi iBail tio bsj Jladws 
eaotnwq boo^ on JBri;t em o;^ emees Jl ,bioo-": sri^ ^cf bseoloslf 
-T9*nl oiirf eiBloebei o^ tenxEiBxa af{;f aniJobTlb xd bsvieecfue dd 

,Yd"rBq toJtrree eriJ <eXBbani:itooia c^firio aeBoXoelb b^ooeT exfT 
tiori;; onujp oric be^u 3firi brt/i "looJiiwIoV n/ioiteciA*' jIibui eri;t b8;tiiliq 
erf;f tYv+TB-v tolaj/t ©^'"^ -J-'^i^^ f^fi-j ,3661 ,8S \Lv\ JwodB aonii: "Saoiia 
"lea^ii.fJloV" bTOw e/i.t bean ;:):'.^i bojqobfi jYnijqinoO taddwH iu>,jii;. ' 
-mooia .eesi ,I YtfiMosTi d-wodB ."aolJoiA" aa nwoid .Bdoriatevo tedtJ 
riJlw nolcfoennoo nl "•ie»;rnuIoV HBoltemA" sbiow ^Ai beaw aixlvarf eJ 
-aoo rj.t "iseinJvXoV brow erft fcsei; YR^-BqffioO -tscfdwH 6r{:t e-colsd ^aaorfs 
o ,owj :;i.J Lieav.jia -^.o ,;;!il: i n-; \..'.-..-9lo si , aaofistevo ;laJ:^« ; ' 
TQddi/H n/)^irt^}R rfqasot sriJ Jon lo tericte^ . bstSvtplg&i ijfwiE air: 
92ij 'i'.^ D9i9iJeinoi ''Tfa9tf;if.rXoV" ^InBoi sJi ©vsrl oi bdXJlJoe al vr: 
Bflisea "3ol.i^^A" sb 9b'5T:f »fl.J o:t nwornt aec'eievo ricriw txoioOi<nri 
-«.t j£' il it ac bs*rri.":rfs^8b 9d o:t nottseup gJiBq x a tis ed o* 
vrf bft50.Coo.tf-i 3B ,8t');;l bsji/qaibnu eriJ "lebalJ .tonloiRxB eriJ Yd • 
?;/; JIG' :i ..)[ afiUiS erij ml el . oO TgdduH aealnBa rfqasot erf* ,bToot 
-&'olL(i^Si ©ri;J ot ^o^^q bs-xe^elgei need bflrf aCiiJia a 'sliibsniflXooXtt ri 
eri* ^anisafi aA .alx'sm a^i ^o Y*»*8l:ie"r *Jol -^aBqaoO leddJ/fl c»r J ^o 
.i-XQ, *Tol^q yrfd o* asnoX^d jfiAM a • •XabgniiaooXa ,YiMqmoO n 
a£ ,beslXl;Jt- ed aao bos aoillo ©rii ©loled won ©tB e;foBl ©riT 




6? 



3 



Banlgan Rubber Co. v. Bloomlngdale - 3. 

above stated, without a redeclaration of the iaterferonce. The case 
Is therefore reinanded to the examiner of interferences with directions 
to dissolve the Intarf ereuce and return the papers, including the rec- 
ords in the interference proceedings, to the primar:'' examiner, who is 
directed to follow the course hereinbefore outlined. 

C. H. i>uell, (Signad) 
Commissioner. 
October 15, 1899. 



I 




.£ - elflbgal moo IS .v . oO leddisH ob^IobE 



-oet efi;t strlbulorrl ^nteqaq etii niw;Jet boB 9Dit?.-t8li6iBl ©rii dvIoaaJtb 

. banllJiro eiotedtile-tari ae'iiJoy rffi wollot o:f b etfoen 
f hi tiT'^iB) ,x_8ijC', .H .0 
.'v-fioip.eiriiTToO 



1 



m 




(Copy) 



October nO, 1890. 



Recorded Vol. 68, Page 71. 






United States Patent Office. 



Ex ■!:)arte William A. Lorenz. 



Trade-HarK for Pastry. 



A"npeal. 



Application for registration filed August 17, 1899, No. 59,^25. 



!.!r. William C. Honlss for applicant. 



This is an appeal from the decision of the examiner of trade- 
marks in refusing to register the ■v7ord "Otaka" as a trade-marK for 
biscuits, on registered trade-mark Ho. 32,301, for the \7ord "Uneeda" 
used on the name class of goods. The conclusion of the examiner 
was that the mark sought to be registered so nearly resembled the 
registered mark "as to be likely to cause confusion or mistake in 
the mind of the public, or to deceive purchasers." To sustain his 
coi-1 + r.-tior. he calls -'.-'■ •^(.^•'"t ion to the fact that the vrords "Uwanta" 
and "Ivianta" have been held to infringe the registered word 
"Uneeda." 

It will be noticed that the words v/hich fell under the con- 
-lor^no + i Qri of the courts substituted "want" for "need", terms in 



r 




65 



many rospects synonymous, and that both ended v/ith the letter "a", 

the sane as the registered marK, while one of the 7;ords conimenced 

with "U» and the other substituted the letter "I" for the letter 

"U". Or, as stated by Judge Lacorabe, in holding "Iv;anta" to be an 

infringement upon "Uneeda" : 

"The incessant use of the personal pronouns in daily speech 
has ar;sociated in every one's mind the sounds represented by the 
letters 'I' and 'U' ; the two words are of precisely the same 
length; both end with the same letter 'A' , and both express the 
same idea, namely, that the prospective purchaser's personal com- 
fort ^■'■— '>-:>. be promoted by the acquisition of a biscuit." 

"lational Biscuit Co. v. BaXer et al., 95 Fed. Rep., 135, 

The above quotation only applies to the present case in that 
both v/ords end v.'ith the letter "a". Neither the letter "I" nor 
"U" is employed, and the word "tahe" is not synonymous with either 
the v;ord "need" or "vmnt". The word "OtaKa" does not, in my opin- 
ion, express the idea "that the prospective purchaser's personal 
comfort would be promoted by the acquisition of a biscuit." 
From my point of viev;, the differences between the appearance and 
sound of the two words are marked, as is also the idea conveyed by 
them. It seems to me that the applicant has had. "better Ixick" 
tha-"i the defendants vrtio adopted the v;ords v;hich were held to be an 

infringement upon the word "Uneeda". I believe that the applicant 
has exercised as much ingenuity as the registrant in his selection 
of a word in conneation with v/hich he desires to sell his manufac* 
ture. 

I see no good reason for refusing the registration, and there- 
fore reverse the decision of the examiner. 

( Signed) C. K. Duell, 

Commissioner. 
October 23, 1800. 






commissioneS duell on trade marks. 



\lA4A^:>tM/ 



m 



flie^^ourt^sy of Coiiimi.-sioner Duei 



iiy tl)e>.t;oui'resv oi v^yoiinui-nnjun ojucr.i we are en- 

. .,ed to pfesentyii i'i« '^'^'j"'"'"" P'*-'-^ **•" a^l^''"<^^s . 
.', hich lie recently delivered at the Inreniational Ooiu- ', 
uiercial Congress at Philadelphia on the subject of 
trade marks. From the wide range of subjects eon-, 
iiected with his work as Patent Commissioner, Mr. 
Duell chose for his address one whi^h is particu- 
I.mIv applicable to the remarkable expansion of our 
I leisn trade wliich is now taking place. He makes 
. ir a strong ease in favor of the use and registration 
M[ trade marks, both as an incentive to our mauufac- 
niiersto maintain the high quality of their exported 
J .ods, and as a protection against foreign competitors 
ho may attempt to pass off a poor imitation as the 
i,',-imine article. The statistics of our exports, as 
, I noted in the address, show that the introduction 
,4 American manufactured products into foreign 
: inntries is advancing by leaps and bounds, our 
e.xports for the first nine months of the present 
year being 1280.000.000, as against 1230,000,000 for the 
same period in the year preceding, an increase at the 
rate of about $67.0011,000 for the whole year. It should 
L-ertainly be the first duty of our manufacturers to see 
that these goods, representing over a quarter of a bil- 
lion dollars in value, are sent abroad under the fullest 
trade-mark protgotion that the law can give. As an in- 
dorsemencof the Commissioner s feeoin.nendatron tnac 
mmufacturers wlio ship abroad should adoj.t a trade 
mark we niav mention that to the writer's knowledge 
a private inquirv which was lately conducted devel- 
o,,ed the fact that an astonishing proportion of the 
goods exported bore no distinct trade mark. The evil 
of this omission is seen when we bear iu mind the 
f.ict that foreigners unacquainted with the English lan- 
■ Mia^e are unable to distinguish the mere manufactur- 
er's "name from other English words on the goods; 
whereas they would readily acquaint themselves with 
a distinctive name or trade mark. As an addition to 
the Commissioner's suggestion, we urge that trade 
marks be not only adopted, but that they be regis- 
tered in foreign countries. Non-registered marks in 
toreign countries are unprotected, and as a matter of 
fact a competitor may register another's well-known 
mark and deprive the original owner of his rights. 

It is a curious fact, the explanation of which we will 
not enter upon just now, that there are many firms 
which have adopted and have been using for many 
rears trade marks that. they have failed to register, 
it has sometimes happened (a ease of the kind having 
recently come under our notice) that a firm has adopted 
a trade mark which was already registered and in ex- 
tensive use for the very same article— a condition which 
could never have existed had the firm in question gone 
|to the trouble of registration, one of the chief benefits 
|of which is that in the process of applying for registra- 
Btion at the Patent Office, a thorough search is insti- 
Ituted to make sure that the particular mark has 
I not already been registered. The case referred to 
[above is that of a milling firm, which, after using 
for over twenty years a certain mark for its flour, 
applied for registration and found to its ilismay 
1 that the identical mark had been in registered use by 
i another reputable firm for over a quarter of a century. 
As it hai.pened, the matter was arranged agreeably to 
the interests of both parties, but it can easily be seen 
how the valuable reputation acquired in twenty years' 
I use of this particular mark and the many thousands of 
[dollars wliicli had been spent in advertising might have 
Ibeen compli't -ly lost to the fijiu 



The moral of this particular case, which could doubt- 
less be duplicated many times over, is that a manu- 
facturer should not only register at once the trade marks 
that he may have had long in use. but also any new 
mark which he has just adopted. 

The selection of a trade mark is not by any mean* 
the simple matter that many people suppose it to be, 
and we' strongly recommend that in making such a 
choice, the manufacturer carefully read over the 
series of "don'ts" which are enumerated in the latter 
part of Commissioner Duell's address. 




' ' rvM TRADE MARKS.* 

rftMMlSSIONER DTIELL 0« , import- 

.res'bject 7<i--,fr:rirreCest domestic trade 
ant one, not ony^oU as.t ^^^^^^ m^PO"" f^-lV" 

,„a commerce, but t.ot^^^^^^ -"^^''"^^S^, 
U, bearing «P°^ ^^^'t^.ted in at the present time, 
jeet we are all most ^^l'^^^.^,,,,,,, of this count .y 
The manufacturers and J ,,, the marke s 

,„ast find an output or ^t^'^'y beginning to realize 

pe cent for the con-eBPondm= >" ^^ ^^.^a ,nd 

^hing, therefore, ^J^J, ^^w^ng is of the utmost im- 
increasethisrema-kables 

ppvtanee. to secure a large foreign tiade we 

■In the first place, to secu _^ ^^^ de 

,„ust manufacture ti« .odt>^^ .^ ,,, ^^^^ 1 
„,and Tliey must be unex .manner of making 

ZS. they a^ -^^^i^ t^lade is once' estai. ; 
..nd packing them. ^;"f_d by continuing to send a 
b^hed^t can be on^ retained ^^^^ „ 

.rade of goods equally as .o _^^ ,^ ^ ^^,„ 

Important, is it f^\^'^^ ,2,, them so iPitvked and 
orward his goods, ^Jo«' ^ ^^^^^,,1, v,eeomes k.iown, no ; 
distinguished that ^vhen the m ^^ ^^ ^^^ 

onl cin palm off ^^^^J^l^^e^ tl^e business 

It becomes esseniuti. 

adoptandusetradeniark^. ^^^^^^^ ^.^^^^^ it has 

From the earhes days o ^^^^.,. 

heen the custom "' ^' "^^ ,^o,able property by the 
tarv rights in all -inds oi ^^j^^_. i„g,gn,a of 

u'eoflndividu-albrands ina, a ^^^ ^^^^^^^^^ d 

::vnership. As t-^e j' ^ --^,, ,,portant for tl.e 
PP-ised tb be local, it becan j^,^ ^v,eir goods 

m nufacturer and — ]-flst 2^- --> «>-"'^"'^' '""f 
,,.„ those of others M fu . ._^^ ^^_.^,^^^^ ^,.^^,3 ,, 
as representations of annuals, ^^^^^^^^^ ,„ ,1 

and the like, ^vere employed- A ^^^^^^ ^^,„ed 

•::i and educatUm ^J^'^Lt^ver the mark selected^ 
words were employed, but ^_.^.^^ mark, the 







^n 



■ip 






The exclusive right to property in trade marks has 
been recognized by all civilized countries for many 
years ; and as the importance and necessity for pre- 
serving proof of the adoption and use of marks be- 
came more important, statutory provisions for the 
registry of such marks have been enacted by most of 
the countries of the vporld. The first national trade 
mark law in the United States was adopted in 1870. 
That act was declared unconstitutional by the Supreme 
Court. Up to that time some 8,000 trade marks had 
been registered in the United States Patent Olfiee. In 
1881 a new trade-mark law was enacted under which 
nearly 35,000 marks have already been registered. 
That the present law needs amendment is universally 
admitted, but I will leave for others the discussion of 
the question as to how the law should be amended. 

iSfotwithstanding the large number of marks that 
have been registered in the Patent Office, thousands of 
alleged trade marks presented for registration have 
been refused because they did not disclose matter that 
was susceptible of exclusive appropriation, and this 
leads me to the point to which I desire most earnestly 
to call your attention. The advice will consist largely 
of '■ don'ts," although it will not be as sweepingly used 
as Punch's advice to the young man about to marry. 

Do adopt and use trade marks, not only for your 
domestic but for your foreign trade. When you select 
a mark, be very careful that it is a lawful trade mark, 
and one to which your right is undeniable. 

Don't adopt your own name as a sole mark for your 
manufactures. Every njan undeniably has a right to ■ 
use his own name upon his own goods to indicate their 
origin and ownership and as a guarantee of their qual- 

* Address delivered at the International Commercial Congress, at Phila- 
delphia. 






t- 






itv and character. This right is common to all men 

and therefore; if there are twenty men by the name of 

'ohn Adams, each one of the twenty has as goo, la 

n ht as anv of the others. True, he canno use h.s 

i in an unlawful manner, and from such use he 

vtrbe enjoined, but a mark which consis s tuerely of 

1 ;i nau^e of the party using it is a very weak reed upon 

f^^. a geographical term. The Su^eme 
I Court of the United States has repeatedly held that no 
: one cln exclusively appropriate to his own benefi a 
geographical term so as to prevent others mhab t n. 
The^ame or similar territory from dealing m similar 
a tide. It is true that the decisions of the courts have 
no been uniform on this subject, but - e-y ca e 
with po<siblv one or two exceptions, where the exclu 
s"v^M°ht to use a geographical term has been sus^ 
tained,%o,ne peculiar facts have led to the de«-o- ^ 
vou wish to keep out of litigation, don't select a geo 

i h^b t^^:J^^^ Without number that wo^s or 
i names-simply indicating the quality or -g-l-nt^^° 
the articles cannot be appropriated so as t° P'^^,,,^ 
: otLrs from employing the same words upon the same 

1 „f thP article While 1 cannot say don't adopt a su„ 

or you will enrich some member of '"y P7^";';°" ■„ ^ 
It is so easy to select a device or symbol or to com a 

'-^::'''^;^;ra:^sr^;LrXnte.at 

U. ?aten:S f^r .^egistry, -^ those not being law 
•: fal trade marks have to be rejecte^, that I have le 
1 impelled to make use of this opportunity to uttei 

' " TUouTolfr'abor-saving inventions we are able to 

cannot fail to greatly extend our esP°' t, t' f ^ "^ '""^^^^^ 
;factared articles ; and, w^en on^ ^^itd^ate 

s:::2:h;y:::^^sx"--e no .a.or> Why 

t t'ade, onc'e gained, cannot be kept indehn.teh. 



C ■ 

O 



•i~V 




'.■>""-w.'""'T'-.--;'' 



IFTTr.n f^TATFP TATE'^T 0??TCF. 



T,x parte American OilCorapany, 




T'S. n., Vol. 60, page 1.59. 

Applicaoioij of Ainericau Oil Coi-ipany filt-d Oct. ,?^ -1899 , #,T9,rvV0 
Attornei'- Chester I^racirord, Iiidiauapolis , Indiana. 
Trade-IIark. 



69 



Or] appeal fron the actioii of the Fxaininer in refusing to 
register the words 'L-?6rin Brothers " as a Trade-Mark for axle grease 
•jrou the refsistered Trade-Mark to Hisren T^rct'-.ers, #24,196, dated 
^ebruar- ', 1894, claiming the \vords"The Pour ^.j'others" and the 
fi-'-rc- "■•" •.;-'. --une class of roods the Co::iinissioner held as follows: 

The decision of the Examiner of Trade-Marks is riffirmed. 



C. K. Duell, 
Hornniss ioner 



October 9, 1899 






\y 



:". STATES PATTWT OPFTCT 



YiX pi..i"i.e 



.: "eller, 



IIS. D., Vol. 60, par.y 1-'^ 



Trade-Mark. 



Apr 



lic.tion of Day ^o Waller, filed Aur ■ 19, 1099, #59,238, 



On a^pe^a froiP. the action of the Commissioner in refusing to 
register the v.ord Unada as a trade-mark for laxative effervescent 
tablets on the registered trade-mark of IHrnily Saxlehner, #29,700, 
dated March IG, 1897, the word Kunyadi for the same class of goods, 
the Comjr.ission«r held as follov;s*, 

" Tt appears that in this country, at least, no one has the 

-^ --.o vrnvri 'nJinr-adi ' as a trade-mark, 
exclusive right to the ust. ox one v/oid ...m.-ai 

Saxle^vT' Eisner, .'^:c . , 88 Fed . Rep., 61. 

" T do not think that trade-mark #29,700, for that word, is a 
pertinent reference. In viev. of this conclusion, it is unnecessary 
to consider the alleged similarity between the .^ords ' I'nada • and 
. runyadi.' The determination of them cannot be understood, and 
should be relegated to the courts. 

The decision of the examiner of trade-marks is refused. " 



November 9, 1B99 



0. H. Duell, 

Commissioner 



The appeal and th. rejection on ... .bove entitled case was 
directed to the rosem.blance between the two words. 

Examiner. 



71 



UIITTED STATES PATV 



'TCE, 



Ex parte Pinpree ■': '^->viith, 



% 



L. , '"ol. 68, pc.re 15-i 



Applicaoiori of Pirj^ree C-: Smith, filed Ilarch 15, 1899, #57, 936 



Trad e -liar k. 



On appeal from the action of the Exaininer in refusinf^ to 



rerisi, v.. 



'•^r^is " Old '-lory " as used in connection with the 



'Inited States flag, the Coinmissioner held &.s follovs: 

" xxQ the mark is presented for registration, T do not well see 
how the words can be separated from the picture in connection 
Y/-ith which they are shown ii; the drawing and referred to in ohe state 
;r;ent . 

I approve the actioi: of the Ex&,miner in rejecting the appli- 
cation. EoY/ever, if the fac simile of the flap is canceled in the 
drawing and all rnftsi-ences thwrt^to are stricken from the statem.ent 
ihe m.ark may be rep:istered provided the Examiner has no other 
frounds of rejection other than those heretofore set forth. 

The decision of the Exai.iiner is affirm.ed. " 



C. H. Duell, 
Com.missioner 



'ov ember 10, 1809 



12 





7a 



UTTTTTin r.TATm 



l^LJPI^SJL^' ^^d. Richter <o Company, 



M?^. -0., Vol. 



Application of 7. Ad. Richter ft Company filed August ? , 189R,"- ,03^ 
Att07'!ie:'s Ilrieson fi:;d " ; ■ -> '^---- :'.--^- ■»- y 

Trade -Mark. 



! 



On uppGal from the action of the examiner in refu.sinr to 
rerister t^^e v^ords Fain Kjcpeller as a trade-mark for a medicine nron 
the /-rounds that they are descriptive and advertising; in character 
i.nd indicative of the action of the medicine the Com.missioner held 
i'.? follov/s: „ ■ ^ 

r have been com.pelled to the conclusion that the vords souf-t 
to be rerastered as a trade-mark are deviod of some of the essential 
characteristics of a lavful tradem.ark. To m.y mind tl:: proposed m.c-k 
lacks the exclusiveness and universality of a riirht to its use, 
which are essential. Tf it were correct to say that pain is expelled, 
t.,.e v/ordG v.'ould certainly be incapable of exclusive appropriation. 
If, as urf-ed by applicant's counsel, the words are not descripti^re 
because pain cannot be expelled, the objection is not therebv removed 
for any one wou.ld have the rirht to use the expression. How often 
the sufferer says, " I.Iy pain is driven av/ayi" " Pain i'iller" vr^c 
not sustained by .the Rhode Tslai.'d Court as a lav.^ful trademark. Tf 
no^^rever, a Court of com.petent .lurisdiction in a contested c;~o shall 

hold that the yrords here soufht to be re;Tistered constitute ,- ^ 1 

tradem.ark, this office win follow such ralin^. y 

The decision of the oxtuniner of trademarks is affirmed." 



rovem.be r 15, 1^99, 



-uell, 

Crtir.ro i t- 



^•iP 




^ 



imiTE.O STATES PATETIT OPPTC]': 



// 



"Fx parte '^ . Ilayer "oot cc P.hoe Conpany, 



I'^ . n., ^'ol . f-3, 177 



Application of F. Mayer Boot & Shoe Company filed Aurv.st 24,1R99, 

.-'-.^9,270. 



Attorneys Penedict ': MorFell, "11 "aiikee, v/iscotjsln 



Yade-LIark. 



On appeal from the action of the examiner in refits inp to 
reyister the word-symbol Dr^'-'^ox as r ~".'ade-marlv for shoes iipon the 
yroimd it is advertising; and descriptive in character and there- 
fort indicates the ("juality of t:~ie foods the Commissioner held as 
fellows : 

" The word-symbol "DRY-SOX" is not, in m.y opinion, a lavfiil 
Trademark. It is, as stated in exparte Brifham., C. D. 1381, 38, 
" an attempt to describe the leadiny characteristic of the roods to 
v,-hich they" ( it ) "are attache-'." 

It clearly falls within therule laid dovv-n by the '" . '^ . Supreme 
Covr-'t in Columbia Hill Co., v. Alcorn, 65 0. G., 1915. 

The te^-m indica.t.es a'quality claimed to be possessed by the 
article upon which the proposed m.ark is intended to be used, and in 
::o v./ay is it an indication of ownership. 

V-Tien such cases as this are brought to m.y attenti.-n, T am con- 
strained to hold tv-at they are not valid tradem.arks . ">^'- 

The conclu.sion of V-'H examiner of ■trademarks is correct and -is 
'iwcision is t,herofore affirmed. " 

C. H , Duell, 



Com.m.issioner . 



"ovem^ber 1 '; , 1G99. 



l^-'l 



IJITITED STATES PAT'ilNT OPPJCi:. 



Ar, 



E x F arte ITev; York Condensed Milk Co . , 



US. D., Vol. CB, •pi\e',e 219, 



York Condenses :''::' Co., filed March 13, 1899, 



7?rw ,915 



Ti'i.'.u« -I.li'.r'k 



Or) i'.ppeo.l fron the action of the Examiner in refusing to rerister 

the word " Borden " as a Trade-I.Iark for dairy products t-oc . , upon the 

■round tnat an. ordinary surnai^e is not a lenitirnate trade-mark, the 

Coranissioner held as f ollovrs ; • 

" The decision of the Examiner of Trade -Marks is affirmed, for 
...I. reasons and upon the n^^r'ounds set forth in Ex parte Buffalo Pitts 
Co., this day decided." 



Tovember 24, 1899. 

Tr: this case the question arose 
e registered under Section 15 of 



C. K. Duell, 

Comjp.issioner 



v/hether the mark could 



-ade-Mark Act 



r' 






TmiTED STATES PATENT OFTIGE. 



Application of George Boyd & So].;;. 



7ile.'i. Api'il 18, 189J5; ?To.58,??35. 



lAS.D. Vol. 68, Page 27S. 



On appeal from the action of the examiner in refusing to 
rogistov the v/ordo "310 KICIdi" as a trade-marK for peanuts, for 
the reason thF<t the words as applied to the goods named are do- 
sorlptive in character, indicating the price of the goods and the 
character of the package, the ComtiiBsloner held a.s follows: 

"The dcoision of the examiner of trade-marks is reversed." 

(Signed) 0. II. D\iell, 

Coraniissioner. 



'/9 



December 14, 1899. 




""''iW\ 



UNITED STATES PATENT OFFICE. 



Ex parte Goldman, BecKman & Co. 



Filed October 18, 1890; No. 59,002. 



¥.P..T}, Vol. 65?, Page PBS, 



Trade-Mai* . 



On fppcal fror.': the action of the examiner in refusing to 
regif.tor the v/ord "Kanttoebeat" as a trade-mark for olo thing, upon 
the ground that the word claimed is merely a misspelling of an 
advertising and descriptive phrase, the Commissioner held as 
follows : 

"The word 'Kantbeoeat* which applicant seeks to register 
as a trade-mark for cortr^ri.n kindK of clothln/;- Ir; .?. rirppelllrr 
an advertising andldeecriptive phrase. It lacks the quality of 
exclnsiveTions and I fail to n<^e hoT,' ary r.?;.mf acturcr or dealer in 
clothing,, of the class on which the word is intended to be ur?ed 
by apTlicant, c.nn be larfully prohibited fror". advcrtlninj: his 
clothing as of the quality that 'can't be beat.' 

"T ^renture to say that no man lives who han not heard a cloth- 
ier or tailor apply the phrase to t:ne clothing, or material for 
olo+hing, a R??le of vhioh he c'eslred to npJ:e. 

"It is conceded that the word soiight to be registered is in 
subRtar.ce the same as the phrar^e. 

"I fm of the opinion that the 7/0 rd lacks substantially all 
of the characteristics of a trade-nark aiid ought not to be regis- 
tered as it wotild not be sustained by a court of competent juris- 
diction. 

"The dooiflion of the trade-mark exaroiner is affirmed." 

(Signed) 0. H. Duell, 

Commissioner, 
December 19, 1899. 



<'5 



UNITED STATES PATENT OFFIOE. 



7.x parte Charles E. Abell. 




Trade-Marx for a Modiolnal Preparation. 



i-^iled October S, IBOO; No. 56, 602. 



Attorney: "F. l. Ohappeai. 



MS.D. Vol. ec, Page S9G, 



On appeal from the action of the examiner in refusing to 
register tlie word-symbol '♦POKIALDE-BALM" as a trado-raarlc for an 
ointment for colds, catarrh, etc., upon the grounds that the v;ord- 
sjmibol war; ^'.esoriptive and also anticipated, and that the statement 
of essential feature was not invariable, the CoraraiBsioner held as 
follnv.'.s : 

"The examiner has; raised various objections to the regintry 
of a traie-naT'^^ for the ^vord-nimbol '7o?Ti'.lde-Balr'i. ' Ke holds 
that it is derjoriptive, and, r;o far a.s the v/ord 'Bain' is concern- 
ed, I agree rrith hira. ( T.x pa rte Butler, 8*7 O.G., 17R1 ) 

"In view of the fact that 'Eromidia' has been held to bo a 
valif. trade-marl:, I a:n incline.-' to thin}: that 'Formalde' is not 
descriptive. I do not think that the prior registered mark 
•Pormaldene' is a good reference, for the reason that the regis- 
tered mark applies to antiseptics and germicides in liquid solu- 
tion; whereas applicant's mark is applied to an ointment which is 
not shown to bo an antiseptic or germicide. 

"Should applicant file a -prov^r amendment restricting the 
statement of the essential feature to the word 'Formalde' , the 
registration may be granted. To this extent the decision of the 
examiner of trade-marks is reversed." 



December 98, 1899. 



(Signed) 0. H. Duell, 
Commissioner. 



I 



85 



,4 



UNITED STATES PATENT OPPIOE. 



linii 



PTirc 



9 toeing 
Ex "parte Shaw, Hammond & Caimey, 



at invo." 



MS.D. Vol. 68, Page SS9. 



■.at q ?r,??TT!T' 



.aae.' 



Trade-Mark for Coffee. 

■^A§?ll8i?i!X^''ifiled Aixgust 26, 1890; No. 60,880. 
^3 aiBi , of a hlatoTTT^ 



'J.- exoe- 



Attorney: Ellis Spear. 



:X'. 



roprlated 



j;arte ■ ' 



APPEAL. 



^n. 



"The question presented lay this appeal is irtiether applicants 
residing and carrying on "business at Portland, Maine, by priority 
of adoption and use of the word 'Bowdoin* for coffee, can have 
such exclusive right that they can prevent other dealers in 
coffee residing at Bowdoin from selling their coffees \inder that 
name. If they can then the examiner should "be reversed. 

Hi agree with applicants' coimsel that the ground for exclud~ 
Ing geographical names from use as lawful trade-marlcs is "•"because 
the geographical name is ordinarily free to all producers of, or 
dealers in, goods sold in the marXet." 

Bowdoin is a township in Maine and it is also a name of a college 
( situated in the same State ) which was named after James Bowdoin, 




'"■'^*^"'^"^^^" 



.aOITIO THUTAq 3PITAT8 oaTimj 



.YanrLBO A bnonmeH ,WBrfa eJ'TPq x^ 



.OS?? e3B<I ,88 .XoV .CI.8M 



.06^1oO 10'i jfiBM-efcBiT 



,08S,03.oW ;098X ,38 tsirs^uk fcelil froitBOlXqcrA 



.iBaqB BlXXS '.'^QtrzottA 



.jAstqqA 



B^nfoJtXqgB loritsriW a± XBeqcrs aiiW ycf fcatnaaoiq rroJtJaaxrp orfT* 

"^Cti^oliq -^cf ,8fi±fiM ,f>nBX*Toq tB aasftiaircT no sniyTiBO fcrcB aniJblaoT 

©Vflri riBO ,991100 101 'nJiobwoa' Mow erf* lo eax/ fcrtB ftoJt^cfofcB lo 

at a^eXBQfc i9rW-o tft9V9icj itbo yorf* ^Brii- JriS±i 9V±auXoxo riowa 

tBrfJ- Tcofcm; aoolloo rr±9rl* sfi-tJCXea morrt nlobwoa *b snifciaoi oalloo 

.fc98i9V9T 9cf JbXirorla laniniBxe 9rid' rtorft itBO yori* "il .snrfln 

-fcuXoxa tcol biuroig 9rft tBrf* Xaani/oo 'R^riBolXqqB ritiw esigB In 

oaxTBoetf* aJ: a^PiBnT-efcBiJ' XjjIwbX bb enu moil asflwri XBOJtrfcrBiaoag jni 

10 ,lo 8i90ixfcoiq XXb 0* 9911 yXliBfrJtbio ai gmen XBo±rIqBi30©s arf* 

•.Jg^fttBfli 9riJ' rtl JbXoa 8£oo3 ,nJt Bi9XB0b 
9S9XX00 B lo omeri b obXb ai: tx J!>«b 9nXBM rtl cjlriartwoi' b a± niofcwoE 
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i 



80 that the name, beside being geographical, is also a surname. 

"The principle Involved in this case is substantially the 

same as that involved in ex parte Famham, 18 O.G., 412. It was 

there held that a manufacturer of ticking at Philadelphia could 

not appropriate as his trade-mark the word 'Lancaster', a city in 

the State of Pennsylvania; and the fact that the name of the city 

was also that of a historical personage was not sufficient to make 

an exception to the well settled rule that geographical terms 

cannot be appropriated as lawful trade-marks. 

(See also ex parte Little & Co., 85 O.G., 1S21. ) 

"The fact that coffee is not grown at Bowdoin does not 

change the rule for it can be prepared for the ffia3*et there as veil 

as at any other place. The fact that Bowdoin is the name of a 

college does not serve to make an exception of the word. If it 

did, then 'Columbia', 'Cornell' and other names of well known 

colleges would be subject to exclusive appropriation although such 

or 
words are geographical words aadt surnames. 

"The decision of the examiner of trade-marks is affirmed,'' 



(Signed) C. H. Duell, 

Commissioner. 



November 29, 1899. 



db 



SSBMSCHB^KBm 



iaiS^assgajspipitpf?^'-^ 



87 



UTII7ED STATES PATENT OTTICE. 



Ex parte J, H, Keller's Soap Works. 



S. C. 0, 



MS.D. Vol. 68, Page 315. 



Appligiatlon filed November 9, 1899; No. 59,874, 



K 



Trade-MarX for f=!oap. 



On appeal from the action of t^e examiner In refusing to 
rop-lRter the words "GOCD TTtSRo as a trade-marX for soap, upon 
certain registered trade-^narKs , the Cormlssloner held an follows: 

"Applicant seeks to register the words 'Good Time' as a 
trade-mark for soap. The words are partly enclosed by two horse- 
shoes, and arranged above them is a third horseshoe nnd clover 
leaves are also shown. The mark has been used less than two 
months. 

"I think the action of the «ixai-ainor v/as oorreot. 

"A prior ]:'ft gist rat ion claims the word-syrobol »01d Time* for 
soap; ar^other prior reristr-atlor. disclof^es a horseshoe, a clover 
lea^" -ii-.d the words 'Good Luck* ; another regl. strati on shoT- *r:c 
reprosontation of two hornefjiioes; a.i'd another registration dis- 
cloBes, among other features, a horseshoe, a clover leaf, ind the 
wordH 'Good Luck J^ofip'. 

"Under the decisions the words 'Good Time' are not regi.i- 
trable, in view of the prior U3o o^' t^^e vvords 'Old Time' for soap. 
•Queen Eeo' hat? been rejected upon 'Queen Bess'; 'Gold Leaf upon 
'Silver Leaf; 'Happy Jack' upon 'Cracker Jack', and many others of 
simil'^.r nrxture. 

"Fven had applicant Bought to reciF?ter the words in connection 
with the horseshoes and clover leaves, its case would not 'nave been 
bettered in view of the prior renir.tered rtiarks. /applicant has used 
its -nrk for such a short time that It will be no hardship for it 
to be denied registration, and, ir the enl it will be doubtless 
found rauch better to adopt a mark which is not open to the objec- 
tions of the present one. 



86 



,0 .0 .5 



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"mw^ 



■^FT 






87 



#69,874 - S. 



"The decision of the examiner of trade-marXs is afflTneri, » 



(Signed) 0. H. rrucll, 

GoniniSBioner. 



Docember HG, 1309. 




1 



.^ 



-t -Jfc:^- : ■'.-^•.•i7!vK^(»->.>-,/-:'g'lVf<:3&, 




Continental Insuranoo Co. v. Continental ITire Associati 

96 Pod. Rep. , 84G., 



The word "CONTINENTAL" held, to l-e generic. 



'■■■J Cii 



'A*j«' 



'6/~ ^4%.l.-i^T^. 




I 

i 






United States Patent Office. 



'•':: jrartr; uattio H. Kveleth, 



MS.T). Vol. 68, Paj^e 47E. 



Tr^vlo-i.IaT-h for Gsuneboardc. 



Application filed Octo'ber f?8, 1899; No.59,7B5. 



On appeal from the action of the examiner In Tefwnlne: to 

register the word "FILIPINO" as a trade-mark for fta^neboardn, 

upon the ground that applicant was not entitled to the exclusive 

appropriation of the said word, in that it is public property and 

geographically descriptive, the Coinraissloner held as follows: 

"The word sought to be registered is clearly distinguifshable 
fron the cases cited where regiBtration waf-. refuaed. It may be 
; suggestively connected with the Philippine Islands or with their 
\re«ident&, V'ut no': '.ivcni'^'ji f;c •:i: na]:G it non-rugiRtrabie. ?ho cl«- 
\jislon of the examiner is reversed." 

(Signed) C. v". Duell, 

Cornnissioner. 

February 8, 1900. 




fiissamssi^^^^ 



T 



UITITED STATES PATENT OFFICE. 



Ex parte Ogden & Shimer. 



MS.D. Vol. 69, Page 105. 



Label. 

On appeal from the action of the examiner in refusing to 
register a label entitled "MeWco Cough Mixture", the OoramiSBioner 
held as follows: 

"This is an appeal ft?ora the decision of the Examiner of 
Trade-marks refusing to register a label entitled •MekXo Cough 
Mixture* upon the ground that it is 'neither an artistic repre- 
sentation nor an intellectual production*. An inspection of the 
label shows that the criticism of the Examiner is well founded 
and under the authorities cited by him the label cannot be regis- 
tered. 

"Applicants refer to a label registered in this Office in 
1884. That label was registered prior to the decision of the 
U, S, Supreme Court in Higgins et al v. Keuffel et al, 55 O.G., 
1130, which has since governed the practice of the Office. If the 
word 'Mekko* is a coined word and the statute can be complied 
with, it is registrable as a trade-mark. 

"The decision of the Examiner of Trade-Marks is affirmed. " 

(Signed) C. H. Duell, 

CommlBsloner, 

March f?3, 1900, 



H 



•if- 



"ik I 




I ' iJ«ii|Wi,'^f,(fi" ■: " 



c 



^ 




UWITED STATES PATENT OPPIOE. 



Ex parte The Ferrol Company of Toronto & Markhaa, Limited. 



MS,D, Vol. 00, Page ISS. 



Application filed November 9, 1899; No.e9»870. 



Attorney: Charles H. Riches, Toronto, Canada. 



TRABE-MAIK. 



On appeal from the action of the examiner in refusing to 
register the word •TERROL* as a trade-maiOc for a medicated prep- 
aration of cod liver oil, upon the ground that the word i« geo>- 
graphically descriptive, the Ooraraissioner held as follows: 

"Decision of the Examiner of Trade-Marks affirmed in view 
of decisions cited by him." 

(Signed) C. H. Duell, 

Commissioner. 



March 30, 1000. 



A 




94 







f 



UKITED STATES PATENT OFFICE, 



Ex parte The ralpyincn'B Supply Go. 



MS.D. Vol. 60» Page 13S. 



TRADE-MARK. 



Application filed February 8, 1900; No. 60, 640. 



Attorney: P. T. Dodge, Washington, D. C. 



On appeal from the action of the examiner in refusing t© 

register the word "Bestov" as a trade-mark for certain named 

.2sadie«)e«.,^the Commissioner held as follows : 

"Decision of the Examiner of Trade-Mailcs affirmed upon the 
reasons given by him." 



(Signed) C. H. Duell, 

Commissioner. 

March SO, 1000. 







III^IPI»J». 



April 10, 1900. 

UNITED STATES PATENT OFFICE. 



3hip •; '': on 

Ex parte R^me Textile Company. 



" ^^■^■■■ 1 



MS.D. Vol. 69, Page 185, 



Trade-jvlark for Knit Underwear. 
•d8 art? r in >: 

Petitiosn. 

ia HiXl Co. ^. Alo&rr. 
Application for registration filed January 30, 1000, No. 60, 476. 



ifessrs. C. A. snow & Company for applicant. 

"The Rome Textile Company, a corporation having its J^ead- 

«?. Co, ■-■■ ' t B?' 

quarters in Rome, New Yorlc^ seeXs to register the words 'The Roman' 

as a trade-raax^ for knit underwear. Registration was refused by 

;ett et kl 
the examiner and this appeal resulted. 

"The Supreme Court in Oolumtoia Mill Company v. Alcorn, 65 

Irlte article An^iy^ '■\<yf. r 
O.G., 1916, states in clear and unmistakable language that words 

in common use designating locality, section or region of ©oxmtry 
cannot constitute a valid trade-mark. In addition to the home city 
of applicant, there are many other localities of the United States 
named Rome and there are the city and province of Rome, Italy. 
Inquestionably the word 'Rome' would not constitute a valid trade- 
nark. Does the change jCrom the noun to the adjective rob it of its 
gBOgraphical significance and invest it with the arbitrary or 




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aiyiow i-Bff* egBwsrtBl alcTBABw+alxnru/ brtB rcseXo rtJ: asJ-Bd-a ^SIOX «yi^«0 

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aotBta fcoJtrtU 9ri;t^ lo ao±t±lBooX lerf^o yrrBm eiB arrarfJ ,tiTBOiX(rqB 1o 

i 
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HJlfeB1^^ btlBV B oJ-i/titanoo i^ort bXuow »amoJI' Mow art J- yXcfflnoli'aei/pnll 

a&t to fl cTorr ov±i^o©t;X>B ariJ" ot m/on art* morel aariBilo erf* aeoCI .jPtbit 

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fanciful form which would enatole it to denote the origin, raanufac- 
tiiro or ownership of the goods on which it is placed, rather than 
the place of manufacture or the class, grade, style or quality? 
I think not. 

•♦By the use of the word 'Roman' the public is led to Relieve 
either that the goods are manufactured in some locality called 
Rome, in which event the case comes squarely within the doctrine 
laid down in Oolurabia Mill Go. v. Alcorn, supra , or else the 
public is led to toelieve that the goods are made after the Roman 
style or pattern and in that case the word "becomes purely VJe- 
scriptiv© and of coxirse cannot be made the subject of trade-mark 
monopoly, Amoskeag Mfg. Co. v. Spear, 2 sandf . , B90; Carnal Co. v. 
Clark, 1 O.G., 279; Lawrence Mfg. Co. v. Tenn. Mfg. Co., 56 O.G., 
1628, 188 U.S., 687; Bennett et al v. McKinley et al, 66 Fed, Rep., 
505. 

"The prefixing of the definite article does not change the 
situation and does not confer a registrable character on the pro- 
posed trade-mark. 

■The decision of the examiner is affirmed.* 

(Signed) Walter H. Chamberlin, 

Acting Commissi oner, 
now Assistant Commissioner. 

April 18, 1900. 



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inriTiin) states patent oppice, 



Ex parte The PairbanKs Oo. 



MS.D. Vol. 69, Page SIO. 



Trado-MarK for Valves, 



Application filed April 4, 1900; No. 60,912. 



I 



Attorney: J. ILdriance Bush, 100 Broadway, New York, N. Y. 



On petition for the return of fee, for the reason that this 

application was practically a duplicate of one that had been 

issued to the corporation on February 27, 1897, Mo. 29,928, the 

Coramissioner held as follows: 

"The facts in this case do not warrant the granting of this 
request to withdraw the application from the flloo and r-et^irn the 
fee. The application was regularly filed, has been acted upon by 
the office an^ registration refused. If there i« any mistake, it 
is the mistake of the applicant in filing this case. It is the 
practice of this office to refuse to grant Buch requests, and it 
has been repeatedly held that there Is no law for refunding fees 
in trade-raark cases. Ex „T;>arte BlocX & Co., 18 MS. Dec, 147; 
Coventry >iachine Co., OO MS.Dec, PAB; ex parte Thayer, 54 O.G., 
597; McDaniel v. Morrow, 54 MS, Dec, 9€1, and Zwack ^< Co., S5 MS, 
Dec . , 158 . , / 



"The petition is denied." 



(Signed) 0. H. DUdll, 

Oonpi^sioner. 



April 30, 1000. 



\ 



97 



s* 



UNITED STATES PATENT OTTIOE. 



E x parte Pingroe & Smith. 



MS.D. Vol. 69, Page 210. 



Trade-MarK for Shoes, 



Application filed Fehruary 10, 1900; No. 60, 611. ^^(f'i^^^^ 



Attorneys: Thos. S. Sprague & Son, Detroit, Mich. 



Associate Attorney: L, S. Bacon, Washinl^on, D. 0. 



On appeal from the action of the examiner in refusing to 

register tho word "VOGrUE" as a trade-mark for shoes, on the ground 

that the word is descriptive and advertising in character, beir^g 

Indicative of quality of the goods to which it is applied, the 

Commit 3 loner hold as follows: 

decision 

"Applicants have taken this appeal from the aatiSR of the 
Exaninor refusing to register the word ' Vogue • as a trade-mark 
for shoes. The refusal to register is based upon the ground that 
the mark being indicative of the quality of the goods to which it 
is applied, is descriptive and advertising in character, 

"The word 'Vogue', when applied to an article of wearing 
apparel, clearly indicates that the article is in fashion, or, in 
other words, as defined by the Century Dictionary, is 'the mode or 
fashion prevalent at any particular time. • 

"It lacks some of the essential attributes of a lawful trade- 
mark in that no one has any exclusive right to its twe. Any manu- 
facturer of shoes is entitled to use the word in connection with 
his manufacture. 

"Counsel for appellants admits that if the word 'In' or 'The' 
was prefixed so as to read 'In Vogue' or 'The Vogue', then the 
objection of the Examiner would be well taken. I fall to 



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* 



appreciate the distinction, and, believing that the decision of 
the Examiner was correct, it is hereby arfimied.*» 




(Signed) C. H. Duoll, 

Coramissioner. 



April 19, 1000. 




^Y 



^^98 



TINITTH) STATES PATENT OPPIOE. 




Ex parte Willlai<i P. Williarason. 



MR.T). Vol. 69, Page 218. 



Trade-MarK for Medical Oonipoimds, 



Application filed October 31, 1898; No. 56,761, 



Attorneys: Higdon & Longan, St. Louis, Mo. 



I 



On appeal from the action of the examiner in refusing to 
register the letters "P S", as a trade-marX for a medicine, upon 
the ground tha-t as used in connection with the rords shown in the 
accompanying fac-simile the letters are not arhitrary, but indioa- . 
tive of the strniame »Parker" in the possessive form, and descript- 
ive of the goods to which the mark is applied, the Commissioner 
held as follows: 

"I agree with the examiner that the letters 'P S' would prob- 
ably "by themselves be regarded as a legal trade-marX, but that 
they lose their arbitrary character vrhen they arc nhown as the 
initial and final letters of the surname 'Parker* in the possess- 
ive form. 

"The cases cited - Blakeslee & Co., 0. D. 1871, S84, and 
Johnson & Co., C. D. 1872, Sll - are well founded, and the mere 
fact that this applicant claims only the letters 'P S« as the 
salient feature of his mark does not take this case outside of 
those above referred to. 

"The decision of the examiner of trade-marks is affirmed," 



I 



(Signed) C. H. Duell, 
April 18, 1900. Commissioner. 



i 



-.-/• > ' 



91 



<w 



imiTED STATES PATENT OFFICE. 



Ex parte Rothwell MinersQ. Springs Go. 



MS.D. Vol. 69, Page ?AQ. 



Trade-MarK for Mineral Waters, 



Application filed February 23, 1900; No. 60,640, 



Attorneys: Higdon & Longan, St. Louis, Mo. 



On appeal from the action of the examiner in refusing the word 

"LIVERTONE" In script, as a trade-mark for mineral waters* on the 

grounds that the mai* is descriptive and indicative of quality of 

the goods to which it is applied; and further, that the particular 

form of type in which the raarK is printed does not lend arbitrary 

character thereto, the CoraralsBioner held as follows: 

"For the reasons stated by the examiner and upon his answer 
his decision Is affirmed.* 

(Signed) C. H. Duell, 

OosxnlBsione3*ii 
April 18, 1900. 



y 



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«.«en e.ew .ertate.^ as.,<.o «« ,«., „,„„ ,,, „, ,^ ^^^^ 

: awoXXol 




101 



wmmmmm 



■.-*'^^- 



OTITKD STATES PATENT OFPIGE. 
Ex parte JieNary & Gaines. 



I 



MS.D. vol. 69, page 389. 



Lal^el. 

Application filed .e^^n^ar^^^^ 
Attorney: Barton PicXering, Dayton, Ohio. 



^^»T. to reKister a label entitled 
on refusal of the examiner to regisxe 

V 4 . T,«ne for a new variety of apples, upon 
•OPALESCENT" , whioh is a name for a n 

+ 4 + 1 A cannot be registered as a 
the ground that a mere name or title cannot 

t>,.t the copies furnished were neither 
label, and for the reason that the copie 

«" °-^iAe'Sclalon of tne examiner is amr»ed. • 

(«!lmea) waiter H. OhaDtoerlin, 
(Signed) ^^^^^ co^jisBioner. 



May 1. WO, 



10 



April 26, 1900. 

UNITED STATES PATENT OPPIOE, 



' V ' I II 



Ex parte New York Mackintosh Clothing Company. 



MS.D. Vol, 69, Page SS5. 



Trade-Mark for Mackintoshes, etc. 



Appeal* 



Application for registration filed February 19, 1900; No. 60, 610, 



Mr. A. 0. Shenstone for applicant. 



■This is an appeal from the decision of the examiner of trade- 
marks refusing to register a mark-, the essential feature of which 
is said to consist in "the word 'Bestyette' in script." 

"The word ^Bestyette' is descriptive of the quality^ of the 
goods to irtiich it is applied and is therefore not registrable. 
It hears such close resemblance to the words best and yet as to be 
identified therewith by the ordinary purchasers, notwithstanding 
the difference in spelling, and therefore the misspelling is im- 
material. Ex parte Henderson. 8B O.G., 458; ex parte (roldman. 
Beokman & Company, 68 MS.D., 28.3. 

*It is stated in the specification that 'the said word Best- 
yette is placed diagonally running from the lower left-hand comer 
with a flourish beginning at the end of the last letter and running 
below the word Bestyette, • and it is contended that it thus pre- 
sents an arbitrary and fanciful •word-picture' which is a valid 
trade-mark. For the reasons set forth in ex parte Peatherstcoie & 
Co., 86 O.G., 1497, however, there is no basis for this »€tta i K>6t ion. 
Printing in script type is common and any person has the right to 
print words in that style. 

"The decision of the examiner of trade-marks is affirmed." 

(Signed) Walter H. Chamberlln, 
Assistant Commissioner. 
May 2, 1900. 



mtmmimttit'-'a^ 



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oi" Jrf^Jhc ori;t aBfl rtoa^aq yriB briB rromrrror) p.t ©<j\[t i'qirroa al anUfrltCI 

sL-^fB fBiif ni. BftTOW fntrq 
".JbaantnLB aJ: 8XT«B-©bflic.+ lo lanlmBx© ori* Io nolaloefc ©rfT" 

,niXrc©cffflairfO ,H to^XbW (fc©frsX3) 
.TdrrolaalflraoO tnfll'alaaA 

.009X ,8 YflM 



101 



?lt 



10' 



-<:''.M!^.:«t<iitti' 



UNITED STATES PATENT OPFIOE. 



Ex parte Robert K. Pentland. 



MS.D. Vol. 69, Page 3S6. 
TRADE-MARK. 



Applioation filed October 9, 1899; Serial No. 69, 606. 



Attorney: Geo. 0. Hazelton, Jr., Philadelphia, Pa. 



"In my opinion there is suoh a reseniblanoe between the word 
•Velvetta' and 'Velvetola' and 'Velvetine' as to peiniit the 
ordinary purchaser to be deceived. The hyphenating of the word 
does not change its registrable character. Ex parte Pittsburgh 
Pump Co., 84 O.G., 309. 

'flhe decision of the examiner is affirmed." 

(Signed) Walter H. Ohamberlin, 
Assistant Oommissioner. 



June 6, 1900. 



^i 



/ 



r^. A 




"m^ 



^itsm 



'^:'ii:::.i::::nxM 



105 



trord or 



UNITED STATES PATENT OFFICE. 



■ '' >-oiHl, the ;• 



^^'^ Ex parte Texas Airo and Pin Oo, 

sustained hr \f ^" ' V':-ilo??-^ 

MS.D. Vol, 60, Page 3BB. 
the xtUes 

Print. ion for moii 

■^■'^' •• Ued w3.th, r: 

i' .-^/■.j.jBiant ills dt?'. 8ar.e i« af. 

Application filed April S0» 1000; No. 336. 



Appeal taXen from the action of the exaninei' in refusin." to 

register a print entitled "Texas Aim and Pin", to be iised for 

advertising purposes for aims, pins and brackets, and which is 

described as consisting of: 

"A pole, as used for supporting telegraph or other wires, 
supporting a cross am in which is twelve pins, grooved for in- 
sulato"^^, below this upon such pole a bracV-ot, *iloo grooved, and 
just belo77 the bracket a cluster of three pine and ten oaX leaves 

in natuTi^.l colors." 

The frrounrls of refnsnl fiTe th?it the print dooe net in ■•any 
mnnnnr indicate thp f*oo(in for rhlch 1+ ir tc be nrjod as an adver- 
tirenent, and therefore cxnnot bo naid to be descriptive; and the 
follovdng decisions are cited: 

Ex parte H. J. Heina Oo., QP. O.G., 1064; 

• •• U. S. Playing Card Co., 82 O.G., ISOO; and 

• » Bamhart Bros. & Spindler, 87 O.G., S118. 

The examiner suggested that applicant substitute copies 
having the title of the print forming a part thereof, and also 



■Mi i I. '4 



1 





.SOIT^O 'SUVSAH. saTATa aiJtTIMU 



,oO n±S[ bflB OTTA BfixeT uf^tBcr x5 



.338 93B<I ,08 .loV .a.aM 



. xtni^ I 



.888 .oV. iOOQI ,0S liiqA hel/T: notifiotZcrqA 



of v^inj/io'T ft;: Tsn-i/nsx^ erf.* 1o n:oJ:tO£ er(* moi"^ fiaXpJ' iBoq-qA 

tcol tssLf/ r ot ^•fTll i)xiB fltiA BBxeT" f>©Xi"]-*rr« trrJ-Tcr b •re*B±ssr£ 

8jt rfoiitw fcrtB ,a*9XoBicf fcriB anlq ,BnrTB roli ssBoqri/q sitJtBl^ievfcB 

ilo an±*B±anoo as fcecTlaoBofc 

^soTiw lerf^o 10 dqBT^eLfii^ anl^ocrqtra rrolt fceai/ bb ,©Io<i A" 
-ni tol feovoois jBfilq ©vlowi- at rfoJtrtw rt± rrriB bboto b sn^JrEOcfqirB 
l:<-rr ,fovocT7>, cr»!:o ,*n?foflTff B 9loq rtOJLfB rtoqif a±rf.+ wo-T^kI" ^r-^otBlx/B 
aevBeX Xbo rroif i)nB enilq Q9^At lo rroctawlo j> ^o.^obtcT ortJ- vioiocf taut 

".w'ToIaP X^TrrtBr? rrJt 

-lovfjf r o' " »■ +t ir. ':'<'•' •'•ot- n^om 0"^+ otnot^rtJ: if^rrnrm 

:fce.+ ':o ?*t«^ arrot-atf)?!) ^rT^7oIIol 

;*-80I ,.D.0 J?8 ,,on snJ-oH .t .H e^iBg xHT 
X>nB ;O0SI ,.0.0 88 , .oO bTBO snxYBll .8 ,U " « 
.8X13 ,.0.0 V8 ,ialtfi±q[3 £ .aoia ftBAmBE " • 

Rsiqoc aJutitBrfjJo ^nBoirrcrrR *Bri* Jbetaeagi/B !Corr±mBxo erfT 

OEJiB bnB ,loerrorf* JrcBq b sff-tonol *rT±iq erft lo oltJt* sri* anJtVBri 




mem^rmlimiiSiSiim 






indicate "by word or picture • preferably toy word, the goods £or 

which the print was to be used as an advertisement; and the 

Oomniasioner sustained his action as follows: 

"The Exa^^-lner's action was founded upon the rules and deci- 
sions fyoveminp' pr'^otice in this line of cases. His suggestion 
as to placing t.'ie ai-plicatlon in oondition for more favorable 
action in reasonable and should be complied with. There being no 
valid ground for xev<5rsing his decision, the sane is affirmed. *• 

(Signed) C. H. Duell, 

Ooinmlssloner. 

Jiine IS, 1000. 



.# 



X-Y; 



t04 



1 



10 A aJ5oo8 Bilt ,Mow \d MlcfBieTteiq - ortufotq 10 Mow "^cf o^BOtbai. 

ent JboR iinQtaeet^ovba nfi ob taai; ocT ol bbw *n±n(i ©rfJ- riolrlw 

rawoIXo'i as rTO±J"OB alrl bentBi-^uB lenolaBiimrtoO 

-±08Jb boB aelin: erf* noqu bebmiol sew noli"OB B'-iF»n:i:.',TjBx3[ «rtT" 

ftci*R033;/3 aJtH .bobbo lo ©nil airft rr± soiJorTq- -^rTirfrovc?, BfToIf, 

aXcfPtovfl'^t 3Toni rrol noxv+xi^noo rtJ: rroitBoxi'v-rri: .*i^- si'-cc-i-/ ■ o^ as 

orr ?^rfJre(f otarfT .rfJ±tr bsllqmoo orf Slj;;ort« brrB olrfprtOBBOT n± fTO±*o« 

" .J!>efrrri:1tlB ai nciBa ariJ" ,ftoJt3X09b 3J:rt ^nxai^vor 10I inwoig JbllBV 

,£l0ya .H ,0 (bQcr^fB) 
.T^nofiaRi-iKTOO 

.OOGI ,8X om/T, 



dW^I'i J^ . ><I^^^B|P!^v.^* '" '< 



'.'.'I'M 



1*. 



1 




UNITED STATES PATENT OJTICE. 



Little et al v. Kellam et al. 



100 Fed, Rep., Page 353. 



(Circuit Court N. D. New York; March 19» 1900; Judge Coxe. ) 



Syllabus. 



"Complainants adopted the name 'SOROSIS' as a trade-raailc for 
a shoe for women manufactured "by them of superior worlonanship and 
a characteristic appearance. After the shoe by that name had 
become known and popTxlar» defendants, who were shoe maniifaoturers 
of the same city, began the use of the name 'SARTORIS', afterwards 
changed to 'SARTORIA' and •SATORIA', to designate a woman's shoe 
of their make, very similar in appearance, but inferior in quality, 
to complainants' 'SOROSIS' shoes. 



"Held , that such action constituted unfair competition, the 
similarity in names and in appearance together rendering it prob- 
able that retail dealers would deceive purchasers into buying 
defendants' shoes for those of complainants." 




- 



I^'' 



!?Sp^«-''", 



107 



July 6, 1000. 



t 



UNITED STATES PATEHT OFFICE. 



2x parte Taylor & Lookett, 



■■jixx' ■■: - 



MS, p. Vol. 69, page 408. 



Trade-Mark for Ootton, Woolen and Silk Falsrics. 

3 alt' tre foTTOf 
Appeal. 

Application for registration filed April 28, 1000; Wo. 61, 066, 



M^xi^xau. x: 



.^H^tl './f. V*- 



Messrs. Briesen & Knauth for applicants. 



■Iriz as r 
It is a fact that the practice of the office in registering 

trade-marks consisting of alternative forms has not heen uniform. 

ties, 'i 

For example, the trade-mark "consisting in the tena or designation 
•Lion'" has been registered, as has a trade-mark the essential 
feature of which was stated to be "an eagle represented by word 

or symbol." On the other hand, registration has been refused for 

by V. 

the word "Squirrel" and the representation of one species of 
squirrel, wMle in another case it v/as held that the word "Biiffalo" 
and the representation of a buffalo were not true alternatives. 
As there are many species of lions and eagles, it would soera as 
though their registration should not have been permitted, luider 
the same reasoning upon which the refusal to grant registration of 




a 



.3DIT€0 TMaTASi SSTATS aSTTIMU 



.0001 ,8 YXi/v 



,tfQACOJ. & T.OL\£,T Q.^1/-.rr xd 



,80^ OBBcr fG9 .-toV .a.P.M 



.aoiTafil Xlia boB nelooW ,no;tcroO toI XiBM-©bBrtT 



. liieqcf A 



.a30,I8.oW ,0001 ,8S Li.xqk b&Ltl noiJBriatsQi lol noiifBOtLqqf^ 



.Bfaaollqcifi to** rfJuspsnX ^3 fteHeirS .eiasoli 



.rnollnit rreod *on bbiI 8irpio.f. ovx^^jsma^lB lo anliaianoo axijsni-sl Bii^ 

noJi.tR-rQfaei. TO snei eiii at BrrljalBnoo" *iBm"-oI:.i?'ii' f>rit ^olffmex© To"^ 

iBX^iTOBae sri-t ^iBm-oJbBi;^ n hbA sb ,Jaorcot«±8o^ rtoecf SBrf »"no±J' 

Mow vci" f)o;frfaa©rtq8i 8I3B0 na" eii oj ftoJ'Bi'n s^bw linJiifw ^o six/i^Bsl 

1:01 besiile'.': neecf aBrf noi;^fiii-8±B8rr ,LnBri Tsjiio erii nO ".loofunfa 10 

lo esiofiKir. 9no "to noitB^J'iteenTrrr.T off.t brtR "loTTJUipn" blow oriJ- 

■olB'Jtli/H" fciow 6riJ' ^Biti fcXoxt eBw tx. &HBO Terf^foftB ni olliiw ^Leniiupu 

,EovijT, rrrii'iB ein^ J-ori f^Tfiw olBltx/J /? lo noJtJ'BJ'noBeTqei eriJ" &n£ 

RB mooa f)Ii/ow ;M ,p.»Iar.© bnB BnoJiX "ia aoioejcfs vriBm eiB oiorii- aA 

tGf.mr ftiifilwneiq ni^acf ovjnrf .torr bljjor^n ^rn^.■^Jh•t^8±J^O'I n±©rfi rtsi/oriJ 

^0 ftOi.tBi.+8i3on ^riBrta oi LBHiiler axl^ rioMw noqi; sninoRBetc 901BB ori 



%f 



#ttl 






107 



the word "Squirrel* and the representation of a squirrel yras based. 

In the present case applicants see> to register "the word 
ssnnbol 'Rabbit' or the representation of a rabbit." They have 
illustrated the head portion of the conventional foin of rabbit - 
that form which is best known, at least in this country. 

I am of the opinion that no arbitrary rule can be laid down 

to cover all cases where alternative forms are s ought to be 

registered. The present application seems to come within the 

line of cases where such registration is pemiiesible. I an in- 

oonclusion 
dlined to this a]^±R±BR in view of the case of Hutchinson et al, v. 

Blumberg, 51 Fed. Rep., 8.5?9, where the court seems to have had no 

difficulty in sustaining as a trade-raark the word "Star" and the 

sinnbol of a star, although there was a difference in the form of 

stars used by the parties. There are as many forms of stars as 

there are species of rabbits. 

It was suggested to the applicants that the phraseology em- 
ployed in referring to the salient feature of the mark be changed, 
80 that it read "a rabbit represented by word or symbol." I do 
not think there is any force in the position assriraed by the 
examiner that the alternative form of the claim is objectionable 
because only the head of the rabbit is shown. 

The decision of the examiner of trade-marks is reversed. 

(Signed) 0. H. mxell, 
July 6, 1000. Conninsionor. 



iLii/O 




UniTED STATIHF PATENT OPPIOE. 



I 

I 



'\\ 



llx parte MoOord-Harlow Shoe Company, 



HS.D. Vol. 60, Page 411. 



Trade-Mark for Leather Shoes. 



Applloat.lon filed January sn, 1000; serial No. GO, 436, 



I 



Attorney: Wallace A» Bartlett, Washington, D. 0. 



.N\\t4 



On appeal front the action of the examiner in refusing to 
register "the word Sterling written across the representation of 
a medallion", as a trade-mark for shoes, on the groiind that the 
oald word was advertising, dosoriptive and geographical in charac- 
ter, the CoimalP!8ioner held apf follovrs: 

"It is thought that the actlor of t! e lUxariiner upon the case 
as presented is corroot and it is therefore affirmed. It is, how- 
ever, one of the border line capes and, if applicant should file 
an amendment setting forth the salient feature as consisting of 
'a raedallion of peculiar foTin and omnmentatlon^ across the face 
of which is written in script the word "Sterling"' and should 
erase from the fac-simllo the words 'the* and 'shoe', the Examiner 
is advised to register the marK.» 

(Signed) C. R. Duell, 

OorimisRionor, 
.ly 7, 1900. 



f 




«"i: 






109 



(COPY) 
UNITED {5TATES PATENT OPPIGE. 



Ex parte Wells-Whitehead Tobacco Oampany. 
. aa it you Kl -.r^ 

MS. D. Vol. 69, Page 476. 



Trade-Mark for Cigarettes. 



1 lay tlie ej Appeal. 



Application for registration filed April 14, 1900; serial No. 60, 082' 

i»ion of th«?_ 

Messrs. Sturtevant and Greeley for applicant. 



Since signing my decision in this case, (dated July 26, 1900,) 

my attention has teen more particularly called to the case of 

106 
Churchill and Alden, 67 MS. Dec, 9-6e, where the present Commis- 
sioner held that the words "Ralston Health Shoe" being non-regis- 
trable themselves, should not be made a part of the essential fea-^ 
ture. Under this decision, therefore, my foimer ruling was in- 
correct and is withdrawn. Applicants in this case can erase the 
words "Carolina Brights" from the drawing and statement and take 
their registration on the monogram, so far as the present record 
shows. On the argument, co\insel requested that in case it was held 
that the words "Carolina Brights" could not r^nain in the case 
in the present form, they be permitted to amend and show their maifk 
as actually used, a sample of such mark having been attached to 



-* ,'- 





\\ .aoiTTo TwaTAq zk7aip. asripiu 



^XOBqsaoO ooojsaoT f>«ariQ*±rfW-aXl8W alificr xSC 



.8V* 9S«*i »09 -i^oV .a.8M 



,a9^oeiBa±0 io1 XiBH-efcBTT 



.iBecrcrA 



-880,08.011 iBlaaa iOOQI ,:M IxrrqA bsLtt nottBiiRt-gor io1 aol^BOiUqql 



, j-fifiolIcrqB To'i -^lelearrO foriB tnBvotrifJS ^arrBseU 



(,0001 ,6S? yliJX J!>e*B£) ) ,8rbo Btai^ rr± noialoeb Yut snlnsia oofr±3 

iLO oafio 8ri.t 0* JballBo vXiBl;/oi:*iBq 9iom neacT bbH aoitnQi^B Xf 

831 
-alnmoO ^rroaerq sriJ- orrorfw ,8^5? ,.oaa .8M V8 ,nef)IA brtB IlirlorarrfO 

-«±39rt-rron snJtotf "oorfS rt*lR»H no^alBfl" afctow orft ;J'Brfv+ fclsri tonoia 

-BOl Ifli*aeR89 orii^ lo *iBq b ebsm ed i^on Jblx/oria jaevloamort* etds^i 

~nl aBW sniXxrr aoBrcot vm ^aioloirori.t ^noiaJtoab airiJ tcsfcxilT .amui 

off.t ftnflTs HBO oaeo airfd" rtx airiBolXqqA .nwBrrfcri^iw al bne 4"06Ttoo 

uXb* l>ruR Jnorasi-fiJa JbriB sn±w«Tfc erf* ptotT: "aJ-rf^Jtrra BfiilorrBD* bMow 

fcToftnT trtsaeTq ort,+ aB ibI on ^rTBTaorrom 9rf* rto nolJBrrtaiseT ttsri* 

fclerf aBw ft 9BM0 nl. fedi bei-aox/poi Isanwoo , trremi/strB orf.t nO .aworfa 

BRRn n-ft rrl nlBfliorc ion fcI;/oo "ai'rtsiTa BntloiBO" «JbTow erf* .+ '^^ + 

;9rt.t woxla Jbrui fcn'wiB o& totttcneq acf vertj- ^otcoI inoaoiq ©rft njf: 





Xu;j 



applicants' letter of June 21, 1900, to the office. This cannot 
"be permitted, as it would Introduce new matter Into the case, but 
applicants may file a new application and make it, so far as prac- 
ticable in black and white, a fac-simile of the label as used. 

The registrability of such a mark would of coiirse be pri- 
marily passed upon by the examiner and I do not wish to be con- 
strued as anticipating his decision. 

The decision of the examiner of trade-marks, in this case, 
is aff lined. 

(Signed) Walter H. Ohamberlin, 

Acting Commissioner. 

August 3, 1900. 



-i r\ J 



4' 



Ul<riTED STATES PATEITT OFFICE. 



Ex part e National Sewing Ilachine Co. 
MS.D., Vol. 69, paf^e 464. 



Application of National Sewinp; Machine Co., filed Oct. 19,1898,#56,692 



Trade -Mark. 



On appeal fi'om the action of the exariiner in refusing to registel- 
the word "Sraiid" as a trade-mark for sewing machines, sewing ip.amine 
stands and attachments, the Commissioner held as follows: 

"The mark in this case is one of a class in which it is ^ery 
difficult to determine whether or not marks are registrable. Since 
the applicant alleges use since 1886, it must have acquired a very 
strong comjaon law right to the mark and therefore any doubts ^lill 
be resolved in its favor. 

The decision of the exajriiner of trade-marks is reversed" 

(Signed) Walter H. Charaberlin. 
Acting Comm.issioner . 

July 30, 1900. 



I 



'M^;:! 



■i ^ 

tUlTlTED STATES PATENT OFFICE. 



/; 



Rjc^jarte^ Bovine, Limited. 
MS,D., Vol., 69, Page 504. 



Application of Bovine, Limited, filed September 22, 1899, #59,479. 



Trade-IIark. 



On appeal from the action of the examiner in refusing to register 
the words "The Bovine", as a trade-mark for food for sheep, horses, 
poultry, and other domestic animals, the Comjnissicner held as follows: 

"The decision of the examiner of trade-marks is affirmed." 

(Signed) IFt-ilter H. Chamberlin. 

Acting Com]r.issioner. 

June 19, 1900. 



11^ ii?^: ^. mmKu.:.^ 

A. M. B. S. Letter No. l^l'li-^045 . 
DEPAFfrmiW 0? TKIG INTERIOR. 
UITITED STATES PATB^NT OFFICE. •^ 

Washin5ton, D. C, August 14th, 1900. 

Mr. Ed.vin B. Hi.y, ~pin4;Pr A QjtoKMJU^ ^ 

#1425-New York Avenue, ^^ LdWls OW I Tv^^ 

Washiiifiton, D. C. 
Sir: 

ReferrinfT^ to your complaint of the 10th inst., that you have 
received no advice concerning two applications for the registratioi 
or labels of the Brotherhood Wine Company, filed July 10, 1900, ot:er 
tha4 an acknowledgment of the receipt of the cases, I am directed jy 
the Commissioner to say that the office appears to have made no 
mistake . 

The original papers are signed by the applicants, and were fiied 
by you. It is the custom of the office to send the receipt for 
application papers and fees to the person who actually places their 
on file, whether in label, print, patent, or other cases. There s 
nothing in the record to show that you have authority to proft»ctite 
the cases or to receive office actions. So lon*jas the papers an 
signed by the Brotherhood Wine Company, you cannoft be recognized as 
attorney unless you file a formal power of attorney, with a twenty- 



five cent revenue stamp affixed thereto, in each case. If the pupers 
V - had been originally executed by you as attorney for the company, the 
ffice actions would have been sent to you, in accordance with the 
decision in ex parte Ivlc Loughlin Brothers, 86 O.G., 1633. The de- 
MjCision, howevf^r, does not «over this particular case. 
( Very Respectfully, 

Chief Clerk. 



mm,,\^ 



"'Py 



113 



UlTITED STATE? PAT7~t- n-^FicE. 



Ex parte The American Tobacco CO, 
IvlS.D., Vol. 69, Page 471. 



Applicaticn of The American Tobacco Co., filed June 7,1900, #6i,\253. 

v' 



''. » 



Q.. 



Trad e-Mark . 




On appeal from the action of the Examiner in refusing to register 
the name "W. Duke's Sons & Co," as a trade-mark for cigarettes, 
smoking and chewing tobacco, the Commissioner held as follows; 

"The name 'V/, Duke's Sons & Co.' is not merely the name of the • 
applicant, and taken as a whole, it is m.ore than an ordinary surname. 
On the showing made, applica,nt has, in my opinion, the exclusive 
right to the use of the name on its goods and the said nam.e may be 
registered in this office as a valid trade-mark. 

The decision of the examiner refusing registration is reversed." 



August 2, 1900. 



(Signed) Walter H. Cham.berlin. 

Acting Commissioner. 



r-, 



-^ / 



;TS?«^x-' 



r^: ^ ■T.v. 



'^gW^ 




115 



UNITED STATES FATFI-TT OFFICE. 



FiX J) arte Rockwood 'Brothers Comr'-ny. 
MS.fi., Vol. 70, Page 29. 



Application filed October 20, li'>99; Serial ITunber 59,709, 



Trade -Mark. 

On appeal frotn the action of the examiner in refusing to register 
.ne v/ord "Owroan" as a trade-mark for powdered sugar, the Coimiss lon- 
er held as follows: 

"The words 'Our Ov-n ' would not be registrable, and a misspelling 
f tJ-.ose words, even if run together to nake a single word, does not 
confer registrability. 

Applicant's brief states that the word 'Owroan' is used in con- 
nection with the initials 'R.B.Co.' but the drawing does not show 
;,hose initials, not are they made a p£irt of the essential feature. 

T>ie decision of the examiner of trade-marks is affirmed. 

(Signed) V/alter H. Charnberlin, 

Acting Corninissicner . 

September 4, 1900. 



^>- 



€ 




't "A ^ 



imiTE.O STATKS PATra^fT OFFICE, 



^*;V^ 



Ex parte Aineric.an Steel Hoop Company, 
Recorded Vol. 68, Par,e 407. 



i » 



Trade-Mark. 



n., T•.m.Rr^r 11 1-^00 , there was received in this office from 
the A^eVi'cTsteei'Hoop Co.pany a description of ^ -^f^^-f-^^f ^^ 
b'^ it for use on iron and steel and manufactures of iron c.nd ateel, 

a^d also^. petition reauestin. the ^---f-^ ^^^^f^^JJ^/./rer" 
ter for said company its alleged trade-mark. As ^^ese papers were 
not accompanied by the affidavit required by the f ^^f^f^J/^'^^ ^f.^' ' 
the application clerk mailed to applicant the usual circular calling 
fttontion to the fact and stating that the application would be taken 
up "or examination upon receipt of formal affidavit, as required by 

^^^ ""on^jLiuarv 19, 1900, this company addressed a paper to the 
Com..issioner, 'calling attention to the fact that it had -ceived th s 
.otice calling on it for an affidavit. Th s P-P«^f/°^^^^f ^^? ;Jf 
the request for registration especially mentioned section lo of the 
TradeXrk Act and' that it wished the protection of the said mark in 
certain foreign countries, the laws of which required registration 
her« as a condition precedent to getting such protection ^J^^J;^ 
has not used the mark sought to be registered m cmmerce with for- 
eign nations or Indian tribes, it could not make the oath required 
bv section 2 of the Trade-Mark Act. The paper also called attention 
t; the Convention for the Protection of Industrial Property concluded 
at Paris on Warch 20, 1883. In this paper the following appears. 

"If vou u^.^r.::ine that you- should register the said trade- 
Aafk without an oath, we respectfully request you to make regis- 
itration and issue a certificate thereof at once for the reason 
above stated." 



Considering this request first, the rules and th- 
of this office are that an application for registratior^ 



' tice 

trade- 



mn 



liBP 



-*TV 



"17 



rcark is .considered in the first instKrice by the trade-mark examiner, 
(Rule "^y^Jt and the Commissioner will not pass upon the question of ap- 
plicantys^ right to ref';ister unless the exaip.irier refuses the rej^i^tra- 
tion ^nan the application is properly before him for consideratioii', ' 
and no'Tl * hen until an appeal or petition has been taken from the ex- 
aminer's action, (Rule 38), 

V/hile in this paper filed on January 19, 1900, there is no 
apecific prayer for relief, yet it may be gathered from the petition 
for rep:istration and certain statem.ents m.ade in said paper that r.ppli- 
cant desires the Comjnissioner to direct that an oath be not required 
in this case, for the reason that applicant desires, uflder the pro- 
visions of section 13 of the Trade-Mark Act, to register its trade- 
mark, although it has not used the trade-mark sought to be registered 
in comj.ierce wit'- foreign nations or Indian tribes. That the oath 
should not be waived in this case seem.s to be clear from the rules 
and statutes. Section 1 of the frade-Mark Act provides that ovmers 
of ctrtuin trade-marks may have their marks registered in the Patent 
Off ice- 

"By paying into the Treasury of the United States the sum of 
twenty-five dollars, an d complying with s,uch r egu l ations as may^ 
be pr e s c r i b e d bv the Oo r.'gr. i ss i o n e_r. of. Patents . " 

One of the regulations prescribed by the Comjnissioner is 
that a complete application m.iist comprise: 

" (^) A brief letter of advice requesting registration, 
signed by the applicant. (See Form 1 on page 19,) 

" (b_) A statement or specification which, in addition to the 
requirements of section 1 of the statute on page 5, must also 
discriminate between the essential and non-essential features of 
the trad«-mark, and if the applicant be a corporation it m.ust set 
forth under the laws of what State or nation incorporated. (See 
Forms 2, 4, and 6, on pages 19-21.) 

'•(c_) A declaration or oath com.plying with section 2 of the 
statute on page 5. (See Forms 5, 5, and 7, on pages 19-21.) 

^ id) A fac sim.ile or drawing of the mark. (See Rules 27 and 
29 an(' Form between pages 21 and 22.) 

"(e_) A fee of twenty-five dollars." 

The section of the statute referred to under clause c, of 
this rule reads: . " 



"Sec. 2. That the application prescribed in the foregoing 
section m.ust, in order to create any right whatever in favor of 
the party filing it, be accom.panied by a written declaration 
verified by the person, or by a mem.ber of a firm., or by an officer 
of % cyj/rporation applying, to the effect that such party has 
time a right to the use of the trade-mark sought to be 







m 



Vf* ^ i «. 



\ 



n<i 







3. 

: cir j-o tered , ttiiu ^.^'ut no other person, firm, ur corpora bJiuxi has 
the rir.ht to such use^ either in the aderitical form or in any 
such near resemblance thereto as mifht be calculated to deceive; 
thc-.t such trade-mark is used in comiierce vrith foreign nations or 
Indian tribes, as above indicated^ and that the description and 
fac sirr.ilies presented for registry truly represent the trade-mark 
soupiht to be rep:istered ." 

This section it is seen prescribes that an applicant must 
make oath to several things, only one of which is that the mark has 
been used by the applicant in commerce with foreign nations or with 
Indian tribes. I do not see why all these reqiairements of the stat- 
ute should be waived, m.erely bacause the applicant has not used its 
mark in corainerce with foreign nations or with Indian tribes. If the 
applicant has not so used it, it should make th^ affidavit as to the 
ether facts required by the statute, and in 'the affidavit It should 
state that it has had no foreign commerce or commerce with Indian 
tribes. V/i^h such an affidavit the application woi'ld b.e considered 
com.plete and then forwarded to the examiner for consideration. 

The questi-on as to whether the oath should stc-.te that appl i- 
ci..nt has used its trade-m.ark in comjp.erce with foreign nations or In- 
dian tribes before it can obtain registration, even under section IS, 
would be a matter that would arise in the examination of the case and 
should be. passed upon by the examiner. Should the exam.iner hold that 
such an affidavit is necessary,, the applicant would have a right to 
petition to the nomi:i?sioner under Rule 38 for review of the exam.iner 's 
action. 

As this coiapany has not filed an application as called for 
by tne statutes and rules, it has not filed a com.plete application, 
and th« p;-.pers thi.t it has filed are therefore not in proper form to 
be sent forward to the examiner of trade-marks for consideration. 

It is therefore held that under the statutes and the rules 
zhH company must furnish an affidavit setting forth the fa-cvte as near- 
ly as it can under section 2 of the ^rade-Mark Act, unc until such af- 
fidavit is furnished, the application will not be considered as com.- 
plete for exiunination . 

In reference to wh&t is said about the Convention for the 
Pr Section of Industrial Property, attention is cilled to the decisions 
of the Ittorney General, 47 0. G., 398, where it was stated that the 
treaty required legislation to render it effective, and as no such 
legislation has been enacted, the Convention has no force or effect, 
so far as this office is concerned, as it feels bound by the decision 
of the Attorney General. See also Klectrical Accumulator Co. v. Ju- 
l^^n^fOfi., 64 0. G., h59. 



JarTiiary 23, 1900. 



C. H. Due 11 , 

ComJf:ies^it.«nt^r . 




•"3PF^'- 




119 



UNITED STATES PATENT OPPIOE. 



Ex parte Oppeau. 



Endorsed October 11, 1900. 



Label. 



On appeal from the action of the examiner in refusing to 
register a label entitled "Oppeau* s Treatment for the Hair", fop a 
medicine, for the reason that it is neither artistic nor intellect- 
ual, the Commissioner held as follows: 

"For the reasons set forth in the examiner's statement, the 
decision of the latter is affirmed." 



(Signed) Walter H. Charaberlin, 

Assistant Commissioner. 



October 11, 1900. 




UniTED STATES PATENT OFFICE. 



Ex parte The American Brewing Co. 



MS.D. Vol. 70, Page 128. 



Label. 



Application filed June 28^ 1900; serial No. 550. 



On appeal from the action of the examiner in refusing to 
register the label presented, for the reason that the application 
did not contain a statement as to whether or not the label was 
published, the CoramiBsioner held as follows: 

"I cannot agree with many of the propositions advanced by 
the applicant, and I do riot think that such contentions can be 
supported, but in the absence of any positive rule requiring ap- 
plicant td state in his application that the label which he offers 
for registration 'has never been published,' I do not thinK that 
the office should insist upon this requirement. The form is merely 
suggestive, and after the examiner has called an applicant's at- 
tention to an omission in the form, if the applicant deep not care 
to follow the form, the examiner should not insist upon it« 

"The petition is granted. " 

(Signed) Walter H. Ohamberlin, 
Acting Commissioner. 
October 2Pjy 1900. 







12:' 



UNITED STATES PATENT OFFICE. 



Ex parte The Hull Coal and Coke Company. 



MS.D. Vol. 70, Page 160. 



TRADE-IJIARK, 



Application filed June SO, 1900; Serial No. 61,334. 



On appeal from the action of the examiner in refusing to 
register the words "RED JACKET* and the representation of an 
Indian in peaceful attire standing by a waterfall towards which 
he is pointing with his left hand, on trade-marks of the Iowa and 
Missouri Coal and Land Co., #5,380, November 87, 1877; and Osage 
Coal and Mining Co., #S7,369, Noveiriber 26, 1895, olaimlng respect- 
ively the words "Blue Jacket" and the representation of an Indian 
warrior, the Commissioner held as follows: 

"I think this is a case where the doubt can be resolved in 
favor of the applicant. The mark as a whole is clearly distin- 
guishable from the references. The rule laid down in ex parte 
Guenther Milling Co., 86 O.G., 1986, is scarcely applicable, as 
all of the features and accessories of the composite mark are not 
objectionable, "either as being anticipated or not a proper subject 
for registry. • 

"The decision of the Examiner of Trade-Marks is reversed." 

(Signed) 0. H. Duell, 

Commissioner. 
November 10, 1900. 




'»»»T^- ■ 




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.0091 ,01 rtocfoevoH 



t. 



UNITED STATES PATENT OFFICE, 



Ex parte Byron Weston Co. 



:.IS.D. Vol. 70, Page 160. 



TR.\DE-LIAroC. 



Application filed August 2, 1900; Serial No. 61,584. 



On appeal from the aotioij of the examiner in refusing to 
register the v^ord "DEFIANCE* as a trade-siarK for ?rriting paper, 
the date of use being given as "sinoe 1872", on the ground that 
the word is geographical, the Conanissloner held as follows: 

"The record in this case does not disclose sufficient to taXe 
it outside of the rule laid down in ex parte Little & Co., 86 O.G,, 
1S21. It is true there has been a long period of use, which would 
be very persuasive when urged before a Court of Equity In a suit 
to restrain the une of the word by another party upon the ground of 
unfair ooinpetition; but, if the use was enjoined, it would be, I 
take it, because it was unfairly used, and not upon the ground 
that the word was technically a trade-mai*. 

"The Examiner of Trade-Marks, in his statement in answering 
the appeal, fully sots forth the decisions of the United States 
courts and this office which are persuasive in interpreting the 
law under w hioh trade-marks are registered. Under the decisions 
cited by him it is necessary to hold that his action was correct, 
and his decision is therefore affirmecj." 



(Signed) C. H. Duell, 

Commissioner, 
Hovember 10, 1900, 



i 






m 



1 ' 



UNITED STATES PATENT OFFICE. 



Ex pa?te Jones. 



MS.D. Vol. 70, Page 173. 



TRADE-I.1ARK. 



On appeal from the action of the examiner in refusing regis- 
tration, on the ground that the marK had not ijeen used in foreign 
commerce or in commerce with an Indian tribe, the Commissioner 
held as follows: 

••The decision of the Examiner of Trade-MarKs is affinred 
for the reasons stated by him,.* 

(Signed) Walter H, Ohamberlin, 
Assistant Commissioner, 

No^'ember 14, 1900. 





UNITED STATES PATENT OFFICE. 



EX parte Samuel C. Blair. 



MS.D. Vol. 70, Page 2S1, 



Label. 



Application filed October ?37, 1900; serial No. 861. 



On appeal from the action of the examiner in refusing to 
register a label entitled "Blairboy's Tonio No. 8", eto., to be 
used on a bottle containing a medical compound, the Commissioner 
held as follows: 

•The decision of the Examiner that 'the label is neither an 
artistic representation nor an intellectual production' Is, after 
an examination of the label, thought to be correct. A label \xn- 
registrable, under the dooislon of th« U. S. Supreme Court in 
Higgins V, Keuffel, 55 O.G., 1189, does not become a proper subject 
for registration because a coined word is added thereto. Ex parte 
Ogden & Shimer, 69 MS.D., 106. 

"Appellant's contention to the contrary, although ably pre- 
sented in his brief, is far from convincing. 

"The decision of the Examiner is affirmed." 

(Signed) 0. H. Duell, 

Commissioner. 
December 14, 1900. 



I 



1^; 



mil TED STATES PATENT OFFICE. 



Ex p arte American Candy Company. 



MS. D,, Vol., 70, Page 236, 



Trade-Mark for Confectionery, 



In the application of American Candy Company for trade-mark 
for Confectionery filed April 15, 1899, #58,211, on appeal, from^ 
the action of the examiner in refusing "Grand Ma's" as a trade-mark 
for candy the Commissioner held as follows: 

"I have carefully read applicant 'shrief but therein discover 
no reason for believing that I was in error in my former ruling 
(Ex parte The Newton Steel Cut Milling Co., 67 MS.I>., 192) that the 
word there and here sought to be registered was not a lawful trade- 
m.ark. It lacks the quality of exelus i ye mess . No one person 
can monopolize it for candy. Home made candy was years ago known 
to nearly,, every household, often made according to receipts which 
were handed dovm from, one generation to another, and candy so mad6 
can and could be truthfully called 'Grand Ma's* candy. 

The decision of the Exajniner of Trade-Marks is affirmed. 

(Signed) C. H. Duell, 
Comjaissioner, 
Decem.ber 20, 1900. . 



X/C/U 



DeoemlDer ?8, 1900. 

UNITED STATES PATENT OPFIOE. 



^'i 



Ex parte American wire Weavers ♦ Protective ABeoclatlon. 



MS.D. Vol. 70, Page 283. 



Laljel for Wire Cloth. 



Appeal . 



Examiner's decision refusing to register said lalael, afflTtned, 



Applioation filed November 17, 1900 j serial Ho. 9S1. 



f 



"This is an appeal from the action of the examiner of labela 
refusing to register a label for wire cloth entitled "All goods 
bearing this label are guaranteed tJtaion made.* 

"It is stated in the applioation that the label is \i8ed upon 
iflre cloth, but there is nothing in the label Itself to indicate 
that fact. In other words, the label is not descriptive of the 
article upon which it is tised, as is required by law, and it Is 
upon this ground that the examiner refused to register It. ft0 
appellant contends that the name of the company 'American WlM 
Weavers' Protective Association', which appears in the label, 
indicates the kind of goods upon which it is used, but this cannot 
be granted. It might suggest it to some and not to others and it 
does not with certainty indicate the goods. The sane is tnia of 
the gold ornamentation on the label referred to by the appellant, 

•The primary purpose of a label is to describe the article to 
which it is attached and give other infoimation about it, and since 
the present label does not describe the article, it is not regis- 
trable. It seems to possess sufficient artistic merit, and if it 
contained a statement showing that wire cloth is the article upon 
which It is used, would probably be registrable. 

"The decision of the examiner Is affirmed. » 

(Signed) Walter H. Ohamberlain, 
Acting Oommissioner. 
|//*/ January 8, 1901, 



' T"^'*'! 



' »J!,JSJJ>OW«i- 



■^m 



i 



aM^..v^ 



UNITED 'STATES PATENT OFFICE. 



Ex parte The Akron Cereal Company. 



Endorsed January 14, 1901, 



-'^. 



Trader-Mark, 



-Application filed August 30, 1900, #61,.709,A.u , ':'""?•'■ ■ 



Orf appeal from the action of 'the eacaininer in refusing tso 

'I 
register the word •♦Mother^-s" as -a trade-rcark for -crushed oat»» thiei 

follo.wing decision was rendered; 

"The decision of the examiner is reversed, " 



January 14, 1901, 



(Signed) Walter H. Ghaaiberlain, 
Acting Corcmissiorfer. 



t\ 



t 



'r 



UNITED STATES PATEITT OFFICE. 



Ex parte Monarch Rubber Co, 
MS.D., Vol. 70 p, 351. 
Application filed.'December 22, 1900, No, 62, 350. 




Trade-Mark, 



On appeal form the action of the examiner refusing to 

register the word "Buckskin" for certain named rubber goods tl 

Commissioner held as follows: 

"It seems to me that in no sense can the v/ord "Buckskin* a 
applied to rubber foot wear and coats be considered as descripe. 
Nor do I consider it deceptive, although possibly it might be 
misleading, but not to such an extent as to render it non- 
registrable. It clearly differs from the line of words refuse 
registration in ex parte Bow©, 50 MS.D,, 168; ex ^art^ Dp Movie 
& Co., 58 MS.D., 14, and 66 MS.D,, 229; and in ex parte ^andeifc 
Lind, 65 MS.D., 185, 

I do not think that any one of ordinary coimrjonsense would 
infer that a rubber shoe or coat v/as made of buckskin, and it 
would be straining a point to believe that any sensible person 
would think those articles were lines with buckskin. 

In my opinion the word is registrable, in this instance 
falling within the line of cases such as that indicated in /'j'^^ 
American Fibre Chamois Co,, vs. De Lee & Dernberg, 71 0.(?., ^i::4H 

The decision of the Examiner of Trade-rferks is reversed," 

(Signed) C. F. Duell, 
February 8, 1901» Commissioner. 



ii'iSSTT-!^ 



r 



129 



Ex parte Liquid Carbonic Acid Manfg. Co. 



MS.D, Vol. 70, page 400, 



In application of the Liquid Carbonic Acid Manfg. Co., 
filed December ?.4, 1900, No. 62,565, for Trade-Mark for the words 
"Liquid Fruit" for syrups for carbohated beverages. 

On appeal refusing said mark for the reason that the 
words are descriptive of the goods, the Commissioner held as 
follows: 

'.'The decision of the examiner of trade-marks is affirmed 
for the reasons stated by him," 

Walter H. Chamberlin, 

Acting Commissioner, 

March 9, 1901, 



t . k 



^I"^ 




UNITED STATES PATENT OFFICE. 



Ex parte Mount Shasta Mineral Spring Co. 

MS.D. Vol. 70, Pago 8B!3. 

Trade-Mark for Beverages, 

Application filed June f?5, 1000. Ho. 61,367. Attorneys: 
Knight Bros., Washington, D. C. 



On appeal from the action of the examiner in refusing to 
register the word "SHASTA* as a trade-^nark for mineral water, the 
Coramissioner held as follows: 

"When application is made for th^ registration of a trade- 
niark, it must "oe shown to the satisfaction of the Conmissloner of v 
Patents that applicant has the exclusive right to the use of the |; 
word or thing sought to be registered, an against all the world. \ 

■The general rule is well established that geographical namea, 
cannot be appropriated as trade-marks. The U, S, Supreme Court | 
ha?? repeatedly so held and most recently in Elgin National Watoh i 
Co, ▼, Illinois Watch Case Co, et al, 94 O.G., 766. ] 

"Shasta, the word her© sought to he registered as a trad©- ' 
mark for mineral water and ginger ale. Is the name of a county in | 
Northern California having an area of 8,060 square miles, and a 
population in 1890 of over twelve thousand. It is manifestly 
geographical and incapable of exclusive appropriation by applicant 
as a technical trade-mark. 

"The Examiner of Trade-Harks was correct in his rejection of 
the application, and his decision Is affirmed." 

(Signed) 0, H. Duel!, 

OoCTRlssioner. 

February 0, 1901, 



J 




'flK^' 



131 



Ex partj^ The Union Metallic Cartridge Co. 
MS.D. Vol. 70, page 400. 



Application filed February 27, 1901, Ho. 62,795, for 
the word "Union" as a trade-mark for cartridges and cartridge shells, 



On appeal refusing the said word because of its geographical 
character, the Cominissioner held as follows: 



"The 



decision of the examiner of trade-marks is affirmed. 

Walter H. Chamberljn# 

Acting Commissioner. 



March 9, 1901. 



'sr 



1 



rmiTED STATFS PATENT OFFICE , 



Ex parte SlftimoTiB Hardware Co. 

M!?,T). Vol. 70, Pag© sne. 

Trade-Marx for Bloycloa. 

Applloatlon filed July 11 » 1900. No. 61»454'. AifOThey^l 
Knight Bros., Waalilngtcin, D. C. 



On appeal from the action of the examiner in r^fuifeing to 

register the word "LAOLBIXE* as a trade-mark for 1)1 eyelet, tiie 

I, 
CoHmlRBloner held »8 follows: 

, »ln Elgin National iTateh Oo. v, Illinois vateh "ilJaC^ dontpany. 
et lal^ Cf4 0,G,, 7B5^ the Suplretne Oouirt, in tspealcinf; of thb Tra4^d-' 
Uai» Act of 1881, said thats 

• •The benefits of th© Aot cannot t)o availed of ±f *thd alleged 
trade-parK is rot euBceptlble of exclusive ownersMp aa^ Buiaihi afed 
not, 'therefore, of T-eprl^t-fatlon.* 
•It further Btate« that: 

, « » Trad«-«iaT*:» are not ^defined hy the Aot« ,,,,f but that 
»no sign or form of wordB can be appropriated as a valid trade- 
marlc wfiloh, from the nature of the fact conveyed by it a primary 
meaning^ others way ^wcloy with equal truth, and wltJi eoual ri^tV 
for the same purpcse* » 

•♦L«clede» 1b the name of a co\mty in Missouri and also the 
name of certain post towns in various states, one of which is a 
njanufaotinrlnj town. The word, therefore, tested by the rules. 
lal'l down by the fJwprewe Court, is not re^fietrable as a trade-marlc, 
for it lacks the element of exolusiveneRj; -JThich Is essential. 
It follows » therefore, that the Examiner of Trads-Marlts was corw 
rect In rejecting the applloatibn, and his decision is affiiraed." 

(Signed) C. H. rsuell, 

Coramissloner, 

February 0, 1001. 




■'s;irjf^ 



133 



UFITEB STATES PATENT OFFICE. 



Ex parte Siimnons Hardware Oo» 

MS.D. Vol. 70, Page 856. 

Trade-Mark for Hardware. 

Applioation filed February S, 1900. No* 60,490. Attoima^: 
Knight Bros,, Washington, D. C» 



On appeal from the action of the examiner in rerfusing to 
register the words "KEEN KUTTER* as a trade-mark for hardwajje, 
the Commissioner held as follows : ^ 

"Every question presented "by this appeal has been heretofore 
passed upon by me, and I oannot reverse my former rulings^ becatise 
I believe them to be correct. The examiner has cited many of these 
prior cases and it is impossible to distinguish the present on 
principle fr<Mn them* 

"No man can appropriate for his ©XJOlusive use words merely 
descriptive of the characteristics or qualities possessed by an 
article, and no length of use can forai a basis to support a valid 
claim to the exclusive use of such words. 

"In addition to the oases cited by the examiner, attention IS 
oalled to Elgin National Watch Go. v. Illinois Watch Case Go^ 
et al, 94 O.G,, 76B, in which the Supreme Court states that: 

■•No sign or form of words can be appropriated as a valid 
trade-mark which, from the nature of the fact conveyed by Its pri- 
mary meaning, others may employ with equal truth and with «qual 
right for the same purpose, • 

"It is too clear for argument that the words sought to be 
exclusively appropriated are descriptive of the characteristics 
or qualities of most of the goods referred to. 

•♦As presented the alleged trade-mark must be refused regis* 
tration, and the decision of the examiner of trade-martts is 
affirmed." 

(Signed) 0. H. Duell, 

Commissioner. 

February 11, 1901, 



134 




-"15 



.. l^larch 8, ,JS|01. 

(COPY). 
■^ UMITED SXATES PATEIII. OFElJ^E, 



'^^- 



Ex parte Fra.nax&.p,.,^ioulton and Compajiy, 
MS . P> Vol 70, J_20 . 
Trade -Mark .for Salt. 



Appeal. 



Application for registration filed October 24, 1900, No, 62,040, 
Mr, Morney V/illiams for applicant. 



This is an appeal from the decision of the examiner of trade- 
V marks refusing to register as a trade-mark for salt the word "Cadillac," 
The examiner calls attention to the fact that there is a town 
J of Cadillac in Praiice and also one in Michigan in this country and has 
'■" therefore refused to register the name on the gconnd that it is geo- 



graphical and not a technical trade-mark, 
f . The applicant has filed affidavits to the effect that the 

name was selected as an arbitrary mark without any reference to its 
geographical meaning and that in so far as known no salt is or can be 
produced at the towns bearing that name. It is therefore argued that 
the word has an arbitrary meaning when applied to salt and that this 



'« 



134 



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eK:' :t.'- :f^6tt- :vfibntB hoXit aflrf ^JnBClXqqB srfT 

or^enete-. yhb ;ruor«Xw XiBm ^tb. ^ -. " ba^oeXea aBw er. 

,n rmoail as tB^t oa ni .iBr-fcT bnB sniitBem XBtirfqaigc 
■3uaiB »iote- n .B-^>>f^ ^^^^^ anx-sBeo aa^. '^^'■"f^" 

'!Bi;tirfnB nB aBri Mow « 



"HW _ 

" 35 



.meaning would be understood by the trade. 

While it may be true that no salt is now produced at the twwns 
of Cadillac, it cannot be said that it will not be produced there in 
future. The nnrae certainly has a geographical signification and there- 
fore its exclusive use cannot be vested in the applicant. Whatever 
may be applicant's rights to the mark under the doctrine of unfair 
coin-petition, he has under well settled law no right to its 
r-ff^ist ration as a trade-mark. 

The decision of the examiner of trade-^arks is affirmed, 

llarch 18, 1901. (Signed) Walter H. Chamberlin, 

Acting Commissioner. 



134 



;,ftf.;/bnicT 9d ioct Z£l- ;3rtJ ftiB* erf cTonniJo it ^oBlLlb 

^c.u«-t«rr.7 ..troailqqB erfct nl bacTsev ed *oxmB5 aau 8vlsi;Is>- 
niBlfxn to 9al'ii9ob ^ri) nafcmf stiBia Qtii ocf aan?ji.-j e'JnBoiicjq 
a;tl oi .t-'^Ii on wbI bel^i-oa Hew lafomr SBrT erf ^nc 



FjAr'*'*^ r 



<i:sii as^- 9 ^3^ i to fsnitnBxe srij "io noialoeb erfT 

.xoer 



.isfrolealtamoO jjnl^oA 



e.- 



- -^ -- ^^^m—^ -^^^ 



135 



I" . il 



"■" 'J 



Copyright— Notice— Name. — Judge Colt, of 
the United States Circuit Court at Boston, has 
rendered a decision in a copyright case to the 
effect that the name of a person taking out a 
copyright must be inserted in the notice of every 
edition published, and that the failure to do this 
vitiates the copyright. The judge said that a 
literal compliance with the statute might not be 
requisite, but that the notice must contain the 
essentials of the name, claim of exclusive right 
and the date when obtained. The case was that 
of Mifflin et al v. Button et al. 







- ^ 



UNITED STATKS PATET^TT OFFICE. 



Ex parte Liquid Carbonic Acid Manfg. Cc. 
MS. D., Vol. 70 page 436. 



1 
On rehearing in the matter of the application of the Liquid 

Carbonic Acid Manfg. Co., filed December 24, 1900, No. 62,355, the 
Commissioner held as follows: 

"It appears from the showing accompanying the petition for 
rehearing, that the goods have been extensively advertised under the 
name of ♦Liquid Fruit,' and they have been called for and sold 
in various parts of the country under that name. Even admitting 
the showing to be true, however, the nax.ie does not, in my opinion, 
constitlite a valid trade-mark, and therefore the request for a 
rehearing is denied." 



Walter H, Chamberlin, 

Acting Commissioner, 



March 25, 1901. 



137 



138 



i 



-4 ir^> 



UIIITED STATES PATEITT OFFICE. 
'•'Carrom" m. ptivi. eame 



that 



n by 



.'"MiTpl Jl "_, (B^ . ^i ..y ., ^ vy til i ams e t al , 



fully 
. game , 



. ai;. t,^;. „ , ^ ' ,^„ the use o^ :;'.' 
• 106 Fed. Rep,, 168. , _„ ^,. ..^ ,^, 

The eross appellants iiisiBt that the court erred in holding the 
word "Garrom" to be a descriptive word which could not be made a trade«3 
mark for a game board. The v;ord "Carrom" or "Carom" is without 
doubt descriptive of a certain game at billiards, and is defined 
to be "the hitting of two or thiree balls in siiccession by the cue 
ball from one stroke of the cue." The word is not, however, de- 
scriptive of the game boards before us, or the games played thereon, 
whether those of the complainants or of the defendants; for, while a 
carrom is possible, it is no part of the game, which consists in 
pocketing the disks, rings, or balls. The games are, rather, the 
^ pool or pocket game at billiards. The word "Carromsl' is impressed 
\ upon each board of the complainants' game as a trade-mark, but 
k does not appear upon the board of the defendants. That, however, 
I is immaterial so long as the defendants advertise their board as 
i carrom boards. Machine Tianufacturers v. Wilson, 3 App. Cas. 389, 
^ It is the case of the use of a descriptive word in a nondescriptive 
I sense. ^Vhile a descriptive word or a geographical or personal name 
" cannot constitute a technical trade-mark, yet where, as here, an 
article has come to be known by the descriptive word, one may not 
use that word to palm off his goods as the goods of another who has 
first adopted it, and by which appellation the goods have come to be 
known. One may not use his own name for such purpose when it works 
a fraud. If he uses the descriptive word, or a geographical name, 
or his own name, it must be so used as not to deprive others of their 
rights, or to deceive the public, and the name must be accompanied 
with such indications that the thing manufactured is the work of the 
one making it as would unmistakably inform the publie of the fact. 
I' Singer Mfg. Co. v. June Mfg. Co., 163 U. S, 169, 16 Sup. Ct. 1002, 

41 L. Ed. 118; Meyer v. Medicine Co., 18 D» S. App. 372, 7 C. fl. A. 
1 558, 58 Fed. 884: Pillsbury v. Mills Co., 24 U, S, App. 395, 12 
' C. C. A. 432, 64 Fed. 841; Raymond v, Pov/der Co., 55 U, S, App. 
I 575, 29 C. C. a,2A55 85 Fed. 231; Mills Co. v. Eagle, 58 U, So 
App. 490, 30 C. Ce A, 386, 86 Fed. 608; Fuller v. Huff (C, C. A,) 
104 Fed. 141; Reddaway Va Banham [1896] App. Cas. 199, The decree 
finds that, through imitation of the complainants' advertisements 
with respect to the game in question, the defendants' deceive 
purchasers and the public into the belief that t?ie game boards 
offered by tliem were made by the complainants, and the injunction 



-•■T^^W'^ 






^ 



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-sijjj-iJ B ebsm sd :ton bXuo» rfoiriw inow ©viiqxToaob b »d o;^ "mcnBO" bio 
iijodil^ ax "inoiBO" to "moTiBO" biow arfT .fenBod 9(iib3 b toI 5li; 
benitsb ax biiB ,abisJt;IIxd is aniBji fiiBiiea b lo avxcfqxTosab Jdirc 
exxs erf^ yd no-taassai/a xii sLlBd &9idi to ovv^ lo ^aliitd 8rf;t" 6d o^ 
-9b ,T9V9wo/i jJon al biow erIT ".eu* erfcf lo 9JiOTd'a eno moil IlBdl 
tno9T9r[;t bgyBlq aamBg edi to ,ajx eTolsd sbnBod araB^ 8ff;t lo evl;tqlT3; 
B alxdw ^tot ; a^txiBbnelab sdi lo *jo actriBnxBlqmos Qdi lo eaoriJ ledier'. 
Lii. a^taiaxioo .tixrfw j9mBS 9di Jo insq on al ;ti tSldJtaaoq ai moTiBo 
grIJ' jTSfi.tBT ,9TB 39KLGg 9rfT .allBd TO ^asHXT ,a>talb 9di ■%ai.i9:AiiOQ$ 
b9aa9Tqmx =:i '.'amoTTsO" bTow grfT .sfeTBiXIxd ia 9raBa ^93l80q .to IO' 
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tT9V9wor[ ,;tBr(T .a^nsbnglgb adi Jo bTBod edi aoqu iBgqqs ion z& 

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9aiBn lBnoaT9q to iBoJtrfqBTaoe^ s to bTov; 9vJ:ifqiT3a9b b ellrA'^ .9a i- j 
sxB tQiecl as, ,eTd.'hv i&x <2lTsm-9bBT;t Isaladzsi b 9iJj:tl;tanoo ;Jorfrtf' 
:Jon YBm gno tbTow 9vl:tqiT0 39b edi yd rtwoa:! ad o:f emos asrC elsicf'. 
asrf orfw To:f;Joj:iB lo aboog &di as aboog aid Ho nilBq oi bTow isdi er, 
9d 0^ 9mo5 evBd aboog edi no.fJBll9qqB risjtrfw x^ ^^P' t^^ bgctqobB J; 
ajfTOw a narlw eaoqTWq rioua Tot ara^n nv/o airf eau Jort ^BCi 9riO .r/.... 
,e!TfB0 lBcl;{qBTS093 B TO jbTow evxrfqlTsaeb edi aeau 9r{ II .buBTt 
TJ:9f{J lo aT9i1oo ©viTq9b o^ ion. as baaij oa 9d iaum ii ,9mBn rrwo al 
b9ixiBqnioocB 9d iesjfx qeigci edi kns ,6llduq ar+ evx909b oi to ^ai 
»rfd lo jfTow Qdi al baiuizBJunBm §nlrf^ adi iBdf actotiB^ilbnl rfaua ^^^ 
.iTBJ 9rf;t lo •lldwq edi imolal v^IdB^lB^talranu biwow bb il gnxjlBCT 9' 
,2001 .cfO .q;jS SI ,631 ,8 .U Sol , . oO .;3lM onuL .v . oO .glM ne 
.A ,JS .0 T ,SVS .qqA ,8 .0 81 ,.oO aralslbeTI .v t9Y9M iSII .bH .. 
21 ,665 .qqA .8 .U ^2 ,.oO allxTI .v xiudslifi :J^88 .bgl 8c3 ,o, 
.qqA .8 .U 36 ,.oO nebvfo'^ .v bnoniYBH jli^a .fog's ^3 ,2SI^ .A . . 
.P. .U 86 ,9l3Ba .V .oO aXIlT" jXS2 .bel 68 ,3A2,J8 .0 .0 e 
{.A .0 .0) I'JxrH .V TeXXjJ*? ;80S .b9\' 38 ,685 .A <.0 .0 OS .OGt . 
96T09b edT .eex .bbO .qqA [3G8X] midaBS .v YBWBbb9fl ; X^'X .ba'S 
acfnsnisaictTevbB 'a^trcBnxBXqrtns Bdi Jo noliRiimi rf^uoTrfi ^indi ai 
avxo&efi 'ai^iiBbnglgb ertjt ,nox;JeQirp nt smeg ©rfcf o;f ;to9qa9T 
afoTBod eiuBTi ^'"^^ ^Bxf^ lexXed edi oicii aiXduq arf^t ' bnB aT9aBrioTi. 
noloortur,:"' '•'•'■* hns , a^triBnlBXqKioa Bdi yd gbsra ot9w ni9.'^:' --' f---:-'*'' 



^ o, 



restrains the advertisements in strict accordance with the ruling 
in Singer ITfg. Co. v. June Mfg. Co., supra. If the first clause 
of the decree here complained of were necessary or essential to that 
which follows we should think the finding incorrect, because, 
while the word "Carrom" may be descriptive of a game at billiards, 
it is not descriptive of t?ie game in question, and the complainants' 
board coming to be known by the designation of the "Carrrom Board," 
or the "Carrom Game," the defendants may not rightfully apply that 
name to their game as a designation or name of the game, although 
they have a right, as the court below decreed, to the use of the 
word in descriptive portions of advert isangnts so long as they use 
them in a purely and properly descriptive sense. 




-^3: 



mmm 



Snilin erii riii-vi Qnnsb'iotzB izinia ni aineaiesiiievbB ©rf:t anisiJas' 
eewBlo danxl arfrf II ,Btqus t.oO .glTI enwl, .v .oO .§1M TagrtiS a. 
cfBrirf oi Isx;trieaae no Yi£6B6a9xi eiew lo bertlBlqmoo eieri eet&sb erf;t ^o 
jeaujBosd ,;t»9'nosni: gnibcci"} erfd' :inl[li feluorfa ew awollolt rfolrfw 
jabnijllllcf :tB 9niB3 B ^o eviiq_i.tce.eb ed YJsm "motiBO" bnov/ 8rf:t eliri: 
'a^tnBniBlqmos 9/^^ bas ,noJ:;taeup ai ewiBjj 9x{o I'D eviiqitaseb ;ton al :?- 
'\bTBoS mom-tBd" eH:f lo noicfanalseb ei-fJ ^d nv/onjl ecT oct gnlntoo briBC 
iBiii xlqqs xllulid-gii ion Y-sei a;tnBbnel9b etii "tSniBO diotibO" edi i 
rfsnoricUB tSniBg ©li^t to ertiBn no noi. ctBrtgiasb b sb entsg ileri^t orf eraBa 
ed.i "ic Q3U 9di oi ^bsanseb wolsd Jtuoo erf^t aB fid-gii b svBri "^isrf- 
aajj \Qdi as and oa a^tagffliaxcfievbB to enoi^tioq evJ^ ."tqxToaeb nx bno 

• eanea Qyliqiimab ^Lteqaiq bns Y-Cs'^wfl b ni m&di 



L<"ll--.rA'-l 



LcjU 



Ninpi .J 



II ^ ^ .. 














"(JtWhu, 









"^nji^l^: 



'.■■^•'.■•'y. 



1 



UNITKD STATES PATENT OFFICE. 



Ex parte Buffalo Pitts Company, 
MS.D., Vol. 70, page 458. 



Application filed March 21, 1899, No. 57,990, Trade -Iferk. 



On rehearing the Commissioner in his ovrn handwriting said: 

"I am constrained to deny t?ie petition for the reason 
that t}\e authorities cited do not seem to me to warrant a reversal 
of my former decision." 

C. H. Duell, 

Commissioner. 

March 30, 1901. 



# 



W^'^'m:- 



w ^ 



1 Z^ " -^ 




;«- 



'^v^ 



T7NITRD STATES PATENT OFFICE. 







Ex parte Harry w. GrooXer. 



MS.D. Vol. 70, Page 465. 



^r' I 



Trade-Mark. 



Application filed February 14, 1901; serial No. 6^3, 688, 



On appeal from the action of the examiner in refusing to 
Tegieter the word ■DORIS" as a trade-mark for hoots and shoen, 
th© CoraraiBsioner held as follows: 

"The word •Doris' is geographical, as well as a feminine 
name., and therefore should not be registered, under the decisions 
referred to .and discussed by the Bxaminer in his statement, which 
prohibit the registration of greographical teiros. 

•The decision of the examiner is therefore affirmed." 

(Signed) F. I. Allen, 

Commissioner, 

April 5, 1901 « 



11?^ 7"f! 



TJNITED STATES PATENT OFFICE. 



F.% parte Harry w. OrookeT. 



MS.D. Volv 70, Page 465. 



TRADE-MAJOCt 



Application filed PeTjruaiy 14, 1901; serial No.6S,690. 



On appeal fron the action of the examiner in refusing to 
register the word "BEKRALDA" as a trade-marX for boots and shoes, 
the Commissioner held as follows: ' 

"The law is well settled, as shown by the decisions of the 
courts and of this office cited and discussed by the examiner, 
that a mark which conslstfl of words in common use as designating 
locality, section, or region of country, cannot be appropriated 
as a trade-mark. As pointed out by the examiner, the word 
»Bemalda» is a geographical word, and its fancifiil meaning is 
less apparent than its geographical meaning, and registration was 
properly refused . 

"The decision of the examiner of trade-marks is therefore 
affirmed." 

(Signed) P. I. Allen, 

GommiRsioner. 

April 5, 1901. 



v\}>^ 



UNITED STATKS PATENT OFFICE. 



'4 

-a 



Ex parte M« Voy, MS.D., Vol., 70 page 486. 



Application filed September 7, 1900, No. 61,7S3, Trade-Mark. 



On appeal from the action of the examiner in refusing to 

register the word "Rhumo" as a trade-mark for liniment, on registered 

trade-marks to Lasslter, 21,631, and Paine, 27,525, claiming 

respectively the words "Rhexuna", and "Rheumlz", for medieines, 

the Commissioner held as follows: 

"The decision of the examiner is affirmed for the reasons 
set forth in his statement." 



April 12, 1901. 



(Signed) 



Walter H. Chamberlin, 

■" Assistant Comr;iissioner, 




■ ' '^Ij^'^jMUS^ 



UNITED STATKS PATEOT OFFICE. 



Ex parte Studebaker Bros. Manfg. Co., 
MS. D, Vol. 70, page 500. 



Applloation filed May 26, 1899, No. 58,561, Trade-Mark. 



On appeal from the action of the examiner in refusing to 
register the word "Sensible" as a trade ~m ark for sleds and sleighs,, 
the Commissioner held as follows s 

"Webster^s Dictionary defines "sensible" as "that which 
causes pleasure or pain." This clearly shows that the word 
"sensible" is descriptive and hence is not registrable as a trads - 
mark for sleds and sleighs, 

"The decision of the examiner of trade-marks is affirmed," 



April 19, 1901. 



(Signed) Walter H, Chamberlin, 

Acting Commissioner, 




^w 



UNITED STATES PATENT OPPICE. 



•■•*i~~"«^ 



m 



/ 



Ex^ pgirte The Sanford Manufacturing Oo, 



71 MS.D,, Page 7. 



Trade-Haa* . 



Application filed March 7, 1900; aerial No. 60,730. 



Applicant petitioned for the return of fee, for the reason 

that itR predecensors in biisineaa had regj.stered the earn© waifc, 

and that the applidtion under oonsl.ieration wan inadvertently 

filed; and the OonMlBBioner hel4: 

•In view of the (iecision in ex parte The PairbanJis Company, 
89 MS»D., f?lp^ this petition is denied," 



(Signed) Walter H. Ohamherlin, II 
Assistant Goramissionerl 



April f?5, 1001, 



■■^i 







147 



April S8» 1901, 



UNITED STATES PATENT OFFICE. 



Ex parte Annie Jenness Miller. 



rrru-. — 

Traae-Haric for Ladies' GaTments, 



Appeal . 



y/Xi'd^^s. 




Application for Tegistration filed January 17, 1901; No. 6f?,483, 



Mr. Ellis Spear for applicant. 



"This is an appeal from the action of the examiner of trade- 
marks refusing to register the word "FITMEEASY" as a trade-mai^ for 
corsets, waists, and underwear. 

"The ground of refusal is that the word is a descriptive teim 
indicating a quality or characteristic of the goods to which it is 
applied, 

»If the word is in fact descriptive, as held by the exsuniner, 
his refusal to register it was proper, for, as was said by the 
Court of Appeals in Bennett v. McKinley, 65 Fed. Rep. ,505: 

"•No principle of the law of trade-marks is more familiar 
than that which denies protection to any word or name which is de- 
scriptive of the qualities, ingredients or characteristics of the 
article to which it ia applied. • 

"The appellant, however, contends that the word is merely 
Bng^efAlve »r.d not descriptive and is conoequently a proper trade- 
mark entitled to registration. The question for determination 
therefore Is whether the word is descriptive or is arbitrary and 
merely suggestive. 

"After a consideration of +he matter in the light of the argu- 
ment on behalf of the appellant, I am clearly of the opinion that 
the word is descriptive and that it is not rendered the less so by 
the fact that it is made up of three words. It cannot in any true 
sense be naid to constitute a coined or arbitrary rord irhen It con- 
veys the same idea whether read or pronour.oed as would the three 
words written separately. A mere change in the manner of writing 
the mark cannot be held to change its character so long as the 




.5I0ITI0 TI5aTAq SSTATR (ISTimT 

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«tol *^- aflBftff- TOW B ^•fic 0* sf-taw^®^ BXrtBK 

. > bnfl ,B*8iBw ,F::tf>aToo 

B± .t,;; \t)oos orf- 'lO oitRxi 'CO AitiXfiirp f, ^ti+RoJtbrri 

. -tXqg* 

^ { r.r, ,ev ;:•ae^ ioB't n± sx Mow ori^r \i* 

an' V : •.j.j'c .tol , I ««w i-Jt letut^^s' 0+ Xbbi/^»t ?^^r* 

:r,0c5 ..cr; '5 ."'?'^ i* .▼ *.+Hffrrf^a rrJt nXBQcrqA "^o ♦tU' 

•:o^x ^*ii "to W*«I o aXqrionJcTcr o's ' ' 

-ofc ! ;;^ow YffB o -iw.toiH P ilO-criw i-f?rf+ rij 

8d.t .L a-ij i^avjJu^-LJijlo to a^rrei. n^uc ,BOt* rj-j^.-- -hivt ':to ovitatiL,* 

YXqt^sci ax bTOW arf^ tfirf^ aLna^aoo ,1»r© 

-ob/!1vt T'iq'Otq B xI.tfT9wp^«,ioo at f.ffP avt' ft fo«TP 

iTgiB en^t lo .tri^JtX 9ff.t nx rtaJ-tBm »r{ f 10 rrot.+ stafctnnoo n fe+^tA" 

iBf-t rt*^"-' - ■'-- ;lo irm I ,-^— '^ ■ ~-"r ^o IXi^rlod no tr- 

■\C(J 0-^ ;- -„ -.-- :a rt.t +r. ^ _ r-roRfr; n± fTT-OW ' 

am J XiVi ai. .tonnBO ti .abiow aatrf.t I0 cyj;/ abjwn al *± J'Brfi- Job*^ 6 
t'c 'Tfirivt fr'To-T v'TBt + trf-cB tCo bsirXoo b »i;;*ttnnori of htB« acJ f»nn 
ae^ ' "^ ' cTi/onoaq to bBST •cb'"'"" ~ "5bJt aoAii arft -■ 

yijt.- .- TX asoiirfo e«t»n A .\- ^m fTOt+irnr 

& anoX OB loioBaBrto ai^i oshbiIo o* fcXerf 9d i-orrnro *cjsra r 



*c rIoXrfw ot 9Xnx+TJ8 
rr«XIerriTfi orfT" 



I 



1 



147 




Impression conveyed by It is the same. The irord 'PITMEEASY* 
would, in jr.y opinion, convey the idea to purohasers that the gar- 
ments possessed certain qualities which would maKe then fit the 
wearer easily or would be oomfortable. 

"The decision of the examiner of trade-marks ia affirmed. " 

(Signed) P. I. Allen, 

Commissioner. 



April f?0, 1901. 



i 



COPY, 



May 9, 1901, 



^ ^--- ^ 



VHITED. STATES PATENT OFFICE , 

Ex p arte George H. Cross. 
Vol. 71, Page 96. 



Trade-Mark for Crackers. 



Appeal, 



Application for Registration filed February 18, 1901, No. 62,7^4, 



Messrs. Munn & Company for applicant. 




This is an appeal from the decision of the examiner of 
trade-marks refusing to register as a trade-mark for crackers 
"the representation of a cracker in plan view and the v/ord St, 
Johnsbury printed in dotted lines diametrically across the same 
in a straight line." 

St. Johnsbury, Vermont, is the place where the applieant 
for registration resides and where the crackers sold by him 
are manufactured, and therefore under well settled law the word 
"St, Johnsbury" alone is not a valid trade-mark. Any person 
manufacturing crackers at that place woixld have the right to 
••^ark them "Sto Johnsbury." 

The appellant contends that the pecularity in the lettering 



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. ,-.P, ^ru asoicB r^ClBcii:t9mBib aenlX bec^.-^ob ai beinltq ^jiudanrioL 

".oiixl cf:l3XB'icta B ^^l" 
^m^Atrrtqn 9'{:r eiarfYr soBlq 9rf;t si ^cfnorTteV ^YincfanrloX. .:f8 

aiiii ^6 bios siejIoBic eil«f eterlw bnB aJ.3Xo9'i .i ;^cfBT:tax39t to'i 

b-i-- c, r.-t wel be-IJJeR IXew tsbrtf/ 8-^l9^9K.1 hriB tb3^uJoBlunBlII ens 

ffoansq Y«A ..^iBra- abBTct bllsv .'i ;fon yi anoL^J "vn^darufol. ..tP," 

oi ^ir->J;i erf.^ evsri biwow eoBlq cffirf-t (Jb ai9J(&BTc ^nnucroBtunBffl 



".Yii-'CaririoL .iP." msff^ JlnB^" 



-.-r.t at N(,ti^Bluo9q erfJ :tBii.t 'RbitaJrioo ;trtB.r.XeqqB eiiT ^ 



•/.■^•i.'i 



2", 



of the word and its position on the cracker or the representation 
of a cracker render his mark arbitrary and distinctive and hence 
registrable. This contention is not suond, however, since this 
office will take judicial notice of the fact that one of the 
well-known and ordinary ways of placing a mark on a cracker or 
similar article is by making depressions in its surface in the 
form of dots. IDn all such cases the thing which attracts the 
attention of purchasers is the mark or word which is produced 
and not the mere manner of its production. As above stated, 
others have the right to the use of the word "St. Johnsbury" 
upon crackers, and they have the right to print it in ^e well- 
known way disclosed by the appellant. The essential feature of 
such a mark is the word "St. Johnsbury," which is geographical 
and not registrable, 

A mere picture of the cracker which the appellant makes 
is not registrable as a trade-mark. 

The decision of the examiner of trade-marks is affirmed. 



( Signed) P. T. Allem, 

Commissioner. 



T'fey 16, 1901. 



lu 



149 r 



# 



Ki\ 



tntf. Ho. 20,562. COPY, jy[ay 7, 1901<3 

April 26, 1901. 

UNITED STATES PATENT OPPICE, 



t 



J*^ 



\ 



B4con, Stickney andCompany v. 
Borden's Condensed Milk Company v. 
Hew York Condensed Milk Go, v. 
The American Coffee Company. 



Trade-Mark for Coffee. 



Appeal from Examiner of Interferences. 



JU)plication of Bacon, Stickney and Co. filed March 8, 1900, No. 60,731. 
Applications of Borden's Condensed Milk Co. filed December 7, 1899, 

No, 60,128, and April 13, 1900, No. 60,970, respectively, 
Trade-Mark No, 32,639 registered to New York Condensed Milk Co, March 

10, 1899; applications filed by same March 6, 1899, No, 57,833 

and No, 57,834, respectively, 
Irade-Marks registered to the American Coffee Company August 23, 1898, 

No. 31,899, January 2, 1900, No. 33,964, No» 33,-65, respectively. 



Mr. Frederick W, Cameron for Bacon, Stickney and Company. 

Vr, Francis Forbes for Borden's Condensed Milk Co, 

Mr. Francis Forbes for the New York Condensed Milk Co. , ; 

lf«8»r»^ Munri and Co. and Mr, Francis Forbes for The American Coffee Oo. 

This is an apr*i by,n»j, on, Stickney and Company from th* 
decision of the examiner^t/i interferences awarding to the American 
Coffee Company priority of adoption and usedf the wor* "Eagle* and a 
picture of an ep^gie used together or separately as a trade-mark for' 
eoffj»«. 

^ <f 'No testimony has been taken except by Bacon, Stickney and 
Goroijany and therefore the question for determination is whether or 
j;-rot that testimony overcomes the American Coffee Company's filing 
date. May 27, 1898. 




J 



i K- 



Bacon, Stickney and Company allege that they and their pred- 
ecessors in business have used the mark in issue since 1857, The 
witnesses Ten Eyck andMcGuire state that they were connected with 
the firm of Bacon, s.nd Stickneys in i857, and since that date with its 
successors, including tiie present firm, and that in 1857 Bacon and 
Stickneys used the representation of an eagle as a trade-mark for id, 
coffee, spices &c. They refer to the eagle as the trade-mark of the 
company for coffee, but it seems doubtful whether this statement is 
strictly correct. Ten- Eyok states that the picture of an eagle and 
sometimes the woHL "eagle" were affixed to packages of coffee sold by 
the Company, but it appears that the name of the retail dealer and not 
the name of Bacon and Stickneys accompanied the mark on the packages o 
This appears from certain labels in evidence bearing the names of 
Weidman andMead. It also appears that at a fair held many years 
ago Bacon, Stickney andCompany placed an eagle above their exhibit, 
but it does not appear that any of the packages constituting the ex- 
hibit bore the mark in controversy. 

Even if it be conceded that in 1657 Bacon, Stickney and 
Company Tiad the right -to the word *eagle* as a trade-mark for coffee, 
it does not follow that they have that right now, unless it is shown / 
that they have used the mark continuously since that date* In regara 
to this continuous use. Ten Eyck says. "Prom time to time, Bacon & 
Stookneys; and Bacon, Stickney & Coo ia constant succession have used 
the same thing." The fact that the mark was used "from time to 
time" does not establish the fact that the use was continuous or such 
as to give the firm the right at all times to it as an indication of 
origin or ownership of the goods* It is true that in the record the 
following appears: 

"Q. 125» Then, as I understand you, you have used contin- 
uously the representation of aji eagle upon baking powder, spices 
and coffee, continuously since the time you became connected with 
the business? 

Objected to as leading and incompetent, 

"A.m Yes." 

This answer was given to a leading question and seems to be 
at variance with the testimony of the witness McGuire, McGuire says 
that he has been shipping clerk for the firm for the pa*t ten years 
and would know of marks used by the firm on goods shipped and that 
about two years before testifying he saw coffee marked "Eagle Brand, " 
Two years before testifying would be the summer of 1898, subsequent 
to the American Coffee Company's filing date. He also testifies as 
follows s 



l|hri^S*jj 



a 



-beiq Tie : Xedi iB:ii »3»XXb xtiBqmoO has x©rti(&i;ta >«ooea 

»^T :. ©oaJte dwaaJ: nl :}Libbi ddi hQsu evarf aaeniautf nl anoeaaoe 

jlitliv u^Dw., dnnoc aieir xbiU iadi »^ij.ts eijtuOaMbpB jio^a aeT aeaeen^iw 

a*l rf;tlw eJflb ;iBi-ii a^aL zbtss,, VQ6I ai svamTaJt^ta bns tnocBfl to anil erlJ 

bOB aooflff veai fll ;tBrf;t bftB ,jnl*! e,f^ s«ibw^6al tBioesdoaua 

nol stiaat- ebBi ^ b bb eX^B© as to noi jectneaanqen srf:f besw SYanjlcltfB 

eri;j lo MTB«-*bBT;t eri;t bb elgao Bii3 oi nelei ^SfiT *c:f> aeolqa »ee11oo 

•1 *nem»;tB.J8 £ldi, n&rliBdvf iv'mduob aw^ea :tl: ;tni tsettoo toI YW^q^oo 

bofi •Xa^a aa lo eiw^f a9:?B*a 3(0 va neT .;^oe^^oo Y-C;toi:i*a 

i£d bXoa aetloo. t« aasB^aaq 0* bexltlB eiaw "aXajsa" bnow ariJ aeinl;t6ffloa 

*o« bflB iBlaeb UsiBi »di to - " ,3 a ;twd <viBqmoO exf;t 

.a6a«3loBq 8!i:t xio litBa erf J Jd _ , , „. _. . oris aooBfl lo araan erf* 

lo aaioBn »di a«ltBed eanebJiva nl aXerfaX nlBJiaa mo-sl aiaaqqa alrfT 

miBB^ Vi»ia bX eri iIbI b *b 9BdS anflaqqa oaXa , bBaMbttfl nBflibleW 

fit-iinxB ttBiU - ii aXase ub ■ raqaoOboB ^©uisl^S tflooaa ogfl 

-xe erf? an.fcrijJi aogBJioaq e ,_i iedi naaqqa ^on aeob Jl iu6 

avoTcfnoo nl aliBta eri;t anod itdld 
boA YeaXai^a taooBH Td8X at iani baiaonoo ad it 11 aevS 
,e©lloo lol jli&ia-9ba'Tii b es 



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J ^trifjlT erf;J bBrf xnaqmoO 
. aworia ai il aaaXau ,won ii-fgl 1 , . ev&d ^^.... iadi woXXol *oa aaob tl 
biBgei nX m&iBb isdi ©aala irXsi/ounl^tnoa >fiBni edj baa« evBrf x«rftf iBdi 
A nooBS ,eml;» o;J eaiti aun^' ,XJ»« ^omS aeT ,ec;w awownllaoo alrf;t o* 

i,,.'/ .-.^ - .^. '-.--.-.- ^ . .^^ ^grj ^ - jj^ ja^eaioo^fS 

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; o deqqa galwoXXol 



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8>ii3fci STJCJ/OoM 



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f>f>'iqtri8 sbooa no anil s 



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IB alrfT 

Iw eoaBiiBV' ^a 

ltd ad aarf erf SbiH 

>x,i- lo moroL bXt/ow fin* 

.a>t en<>led anBa\: omi iuo6B 

gnlx^l^sft^ ii*jol©rf 8*iB©y owT 

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"Q, 160. 
upon itt 
■A, 

"Q. 
coffee? 
•A. 



3. 



Did you ever seen any other with 'Eagle Brand* 



With the words Eagle Brand? No, sir, 
161. Any others with the word •Eagle* on them, for 



I saw the label in the Book there (referring to re- 
ceipt book in evidence) with Eagle on it; not marked Eagle Brand. 
■Q. 162, It was not the word Sagle? 
"A. The word was not there, the picture was there. 
"Q. 163. How long before this label which you now have in 
youfr hand, marked 'Eagle Barnd* say two years ago, was it that 
you saw any other label with the picture of an eagle on it, up!bn 
coffee that was being put up by pour firm? 

*A» The only picture was on coffee by wholesale, a num- 
ber of years ago; I don't know how many years back, probably 
in the 60s; put up for Weidman & Mead of Albany. The firm put 
up coffee with an eagle on the label.* 

Ten Eyek recalled as a witness testifies that McGuire was 
not in a position to know what marks were being used by the firm upon 
its goods, but offers no explanation why other employees who were 
familiar with the marks used were not produced as witnesses to estab- 
lish the use of the mark. The circumstances made it incumbent upon 
Bacon, Stlckney and Company to call such witnesses and their failure 
to do so raises the presumption that no favorable testimony could be 
obtained. It is held that the testimony fails to show that Bacon, 
Stlckney and Company were actually using and had a right to the mark / 
when the American Coffee Company's application was filed. i 

The decision of the examiner of Interferences is affirmed. 



(Signed) P. I. Allen. 

Commissioner. 



May 6, 1901. 



it 



■•i V« ■ -iA^^y'-'-i 




Intf. No. 20,781. 
April 23, 1901. 



COPY 



May 3, l^Ol. 



UNITED STATES PATENT OPPICE. 



Hawkes v. The New York Consolidate* Card Company. 



Trade-Iferk for Playing Cards. 



'%. 



Appeal from Examiner of Interferences. 



Application for registration of Albert W, Hawkea filed July 11, 

No. 61,452. 
Trade-Mark of The New York Consolidated Card Company registered 

September 18, 1900, No. S5,046# 



Messrs. Dyrenforth, Dyrenforth and Lee for Hawkes. 

Messrs. Briesen and Knauth for fhe New York Consolidated Card Co, 



This is an appeal by the New York Consolidated Card Com- 
pany from the decision of the examiner of interferences awarding 
to Hawke* priority of adoption and use of a trade-mark for plajrlng 
cards consisting of the word "automobile," 

The New York Consolidated Card Company's application 
was filed On June 27, 1900, and the mark was registered to it on 
September 18, 1900. Hawkes* application for registration was fil- 
ed on July 11, 1900, In its statement, the New York Consolidated 
Cartl Company alleged tlmt the mark was adopted in January, 1900, 
and has been used continuously since, but the evidence on its be- 
half fails to establish any actual use of the mark prior to June 
7 when a shipment was made to England. It can be conceded no 
earlier effective date than that upon which goods bearing the mark 
were actually sold* 

Iii his statement Hawkes allege* that the mark has blien 
us^d by him continuously since June 1, 1900, It appears 'from the 



J 







2, 

evidence that Hawkes took testimony in this interference, but fail- 
ed to file it in this office and thereafter, on January 10, 1901, 
filed a written declaration of abandoment of his application for 
registration* The examiner of Interferences refused to accept 
this abandoment as a warrant for entering judgement of priority for 
the reason that it was accompanied by the statement that m - ^ 

"I do not in any way concede priority to the New York 
Consolidated Card Company r k x and do not in any way abandon 
my said trade-mark nor any of my common law rights thereto and 
thereunder." 

In view of Hawkes* failure to file his testimony, this -f 
office would have been warranted in rendering Judgement against htlm 
on the record, but the New York Consolidated Card Company has filed 
a copy of the testimony taken by Hawkes and has asked that it be 
considered under paragraph 7 of Rule 154. The examiner of interfer- 
ences considered it and in view thereof Hwarded priority to Hawkes. 

It appears from That testimony that in May, 1900, Hawkes 
concluded to adopt the mark in issue as a trade-mark for playing 
cards and as early as lIsLy 20 applied it to sample acrds. It does 
not appear certainly just what those samplp cards were, but they 
seem to have been merely pieces of card-board with a design and the 
word "Automobile" printed on one side and Hawkes* name and address 
on the other. They were not in fact playing cards which could 
actually be used in playing a game, since they apparently did not 
have the spots and distinguishing marks upon them and were merely 
odd cards which could be of no practical use. They served no pur- 
pose save as an advertisement which mi^it be taken as an indication 
that Hawkes intended to manufacture playing cards and mark them "Au- 
tomobile." They were of the same general character as and amounted 
to nothing more tlian would advertisements by handbills or in the 
papers of his intention to make and sell cards under that name, but 
as said by the court in Schneider v. Williams, 44 0.0., 1400s 

■Mere adoption of a mark or sign and a public declaration 
by advertisement or otherwise tliat a person will at a subsequent 
time put a particular thing on the market marked or distinguished 
in a certain way create no right* Until the thing is Pistually 
on the market marked by the particular mark of the person intending 
to acquire a title no property right in the mark arises* " 



Hawkes had not at that time actually piacecd cia.raB iiiarR.«» as 
indicated on the market, for it appears from the testimony on his 
behalf that such cards were not actually made until August. 
It is true that he claims to have received an order for the "automo- 
■bile "cards on June 1, but not having made the cards he could not 



i 



.a 





,01 ^?lnolnq 10 *n«Besb«t a«l-«9i« nol inB-rtBW b ^B ^"^^°^«^^^ ^^^J 
- Lrf;t toemecrBia erf. ^d beixiaqraoooB bbw *1 .Bii* floaBen erf* 

:fnoY weW eri* oi xnioti<i ebeonoa >jbw ^nB nl J^" °^J[* 
aobnsdB XBw ^nB nt Jon ob bnB k k « ^n^qmoO btBO ?«*f ^^^""^ 
bflB o:renerlj aidaln wbI »o«»o» X« ^o xob non ^•»^°'-'^«:;*j,^^*^^^" 

alri^ ,^oml;tae:r axri Bill oi enuIiBl taeiwBH lo welv nl 

iJxn air^Bqro^'-oTe.BblloanoO .noY weK erf. ..d ,bnooen erf. no 
Bd n .flli. be^EB BBrf huB .eiwBH .£d HBiB. vtomilao. erf. lo xqoo B 
-nelne.ni lo iBnlmBxe orfT .^Sl elufl lo T rfqBiaBiBq nebnu beneblanoo 
raeiw^H a. x^nolnq I^sI.-.b^ loenerf. welv nl bnB n bensblanoo aeone 
MJtwH ,00ei .ybM nl .Brf. Ynonil.ae.**rfI moil anaeqqfl .1 
anl^Blq nol ^iBfl-ebBt. b aB ewaal nl iiBm erf. *qobB o. J-^^f^^^a* 
Sb .1 .abnoB BXqMBe •. n bellqqB OS v^ 8B ^Inae aB bnB .hnBc 
T.rf. .ud .atBW abnBO iXqmsa eaori. .Brfw .aut ^InlB.neo •«^«W Jon 
•rf. b«B nalaab b rf.tw bnBod-bnBC lo aeoelqjile-tam «««^^^«J °J "•^^ 
saenfobB bnB eniBn «ae:(wBH bnB Bbla eno no ^^^"^"^^ '•^^'^°'°^*f .f^^ 
bXuoo rfalrf^ ab-iBo anl^Xq *»*! «1 *on anew ^erfT .nBrf.o erf. no 
♦on bib xX^rte-^BqqB ijerf. eonla ,6«Bg b gnl^alq nl beau ed XXXbw.ob 
XXenem e^iw b„B Lrf. floqu a^nBm salrfaluanl.alb bttB a.oqa erf. evBrf 
-nwq on bemea ^erfT .eair iBcl.SBiq on lo ed bXuoo rfolrfw abnBo bbo 
nol.Bolbnl na aB ne^. ed ..«!« rfslrfw .neineal.n»vbB ««^* J^" J^^^ 
-uA- merf. iiBm baa abnfio anl^Blq enu.oBlmiBfti o. b»bne.ni "^fj **2i 
be.n«of.u» bttB aB iB.aB-iBrie iBienea emBS eri. lo B-iew xerfT ••"/<^; 

•ri. al no alXldbnBrf xd Biao3i9&tii»vhB bXuow nB.f. enora anlrf.on o» 
*iid ,»iSBn .Brf. nebnu eb'iBc XXea bOB t^Bra o. noi.ne.nl alrf lo aneqBq 
zOO^l ,.0.0 ^h ,affls4£XlW ,r neblenrfoB al .nuoo erf. ^d blaa aa 

uoi.B-tBloeb elXduq b bnB aat« io <nBin_fl lo nol.qobB eneM- 

toBupeadna b .b XXlw noateq b iBiii BBlwnerf.o no tneflieal.nevbB ^d 

berfaluaal^eib no beslnBn .eMnsm erf. no ^ittiiS neXual^iBq b *oq eml. 

TXXbu.ob el Sfllrf. erf* 11^^ ..rfaln on e.Beno >{bw taB.neo b ni 

anlbne.nl noaneq erf. lo MnBfi nBXiiol.nBq erf. xd beXnBin .e^tam erf. no 

■.»>8lnB ifnsra erf> «1 .rfaln ^.neqonq on eX.l. b enlupoB o. 

MS b«:]CnBa ebnBA D^eoaiq ^XXbjj.ob emi. .Brf. .b .on barf eeiwaH 

•Irf no v»oml»«e. erf. monl anaeqqa .1 nol ^.ealnBfli erf. no ^^^J^lhnl 

,.«i;8«A Xl.no BbBin ^XXisu.oB Ion ene* ebnao rfowa .arf. IXarfed 

-.omo.iJB" erf. nol nebno ob bevleoen evarf o. talaXo erf .arf. aun. ai .r 

.on bXuoa erf mbi^iz erf. •bam ao^varf .on .ud «X enuL no abnao &iic^ 



^ Ik 9. I 

O-0-' ^fm, 

i at once and it was not until the latter part of August that 
nt i,'" *^^® *° ^° °'' ''^^■'- *^'® order even in part, B. C, Hawkea 
te. If ies that the first time he saw "a complete deck of 'Autoirjobile^ 
piying cards x x was some time in the latter part of August, 1900. ■ 

The mere receipt of the order of June 1 for something which 
^wkes did not have cannot, in my opinion, be properly considered 
*s the adoption and use of the mark which und«r the law gives a 
farty the exclusive right to the use of the mark* 

Since Hawkes did not produce the article in question, namely, 
playing cards, marked as indicated, until August, 1900, he 
cannot be awarded any eariller date for his adoption and use of the 
mark and that is subsequent to the New York Consolidated Card 
Company's filing date and to the date when they actually sold cards 
bearing the mark. 

The decision of the examiner of interferences is reversed 
and priority is awarded to the New York Consolidated Card Companyo 

(Signed) F, I, Allen, 

Commissioner, 
fey 3, 1901, 



■■'?*'. 




U.f 



-i .^.A ^^ 



"vpjv-^: ...i-/'-" 



May 16, 1901. 




/^^. 



4^%</:' 



UNITED STATES PATENT OPPICE, 



Ex parte Evans & Shapard, 
MS.D. Vol. 71, Page 132. 



Trade-Mark for Medical Compounds, 



Appeal • 



I 



Application for registration filed February 23, 1901, No. 62,770. 



Mr. Henry N, Copp for applicants. 



This is an appeal from the decision of the examiner of 
trade-marka refusing to register the word "Pain-ease" as a trade- 
mark for certain medical compounds, on the ground that it is descrip- 
tive and advertising in character and is not a lawful trade-mark. 

A consideration of the case and the authorities cited shows 
that the examiner's action was proper and in accordance with the re- 
cent decisions of the office. The mark would undoubtedly convey 
the impression to purcharsera that a person suffering pain would be 
relievied by the use of the medicine and therefore, it is descriptive of a 
valuable quality or characteristic of it. It was apparently adopted 
for advertising purposes and not as a mere indication of origin or 
ownerHkioft and it would be so understood by purchasers generally. 



"%^ 



Wb 



^;-.: 



s^:. -i:e:?- 






Auy manufacturer has the right to say that his medicine eaess pain 
and a mere reversal of the usual order in which the words are written 
does not give them such an arbitrary character as to make them reg- 
istrable as a trade-mark. Bgparte Hance Bros. & V/hite, 87 O.G., 
698« 

The Supreme Court said in Columbia Mill Co. v. Alcorn, 
65 O.G., 1916: 

"That if the device, mark, or symbol was adopted or placed 
upon the article for the purpose of identifying its class, grade, 
style, or quality, or for any purpose other than a reference to 
or indication of its ownership, it cannot be sustained as a 
valid trad«-mark." 

Under this statement and similar rulings by the courts 
In other cases^ this office refuses to register marks of the character 
here presented. 

The decision of the examiner of trade-marks is affirmed* 

f Signed) F. I, Allen, 

Commiss loner. 

May 21, 1901. 



'.~vA ■£■'>' ■'■■-- 












■•^3 



.'/•• 



May 8, 1901. 



/5r^ <rY/. 



UNITTO STATES PATEITT OPPICE, 



l» 



Ex £art« Ovlde Lefebvre. 

IJSS.D.t Vol. 71, P. 118. 
Trade-Mark for Starch, 



Appeal. 



Application for registration filed February 21, 1901, No, 62,747, 



Messrs. Marion and Marion for applicant. 



This is an appeal from the action of the examiner of trad6> 

marks refusing to register as a trade-^ark for star«h a mark, the 

essential features of "which are described as follows: 

"The representation of a Chinese in the act of ironing 
an article of wearing apparel, the IroniA^gable being in 
the forerground and having an open package of starch thereon, 
the Ohinaman locate* In rear of said table, he being shown 
with full face, and shelving located in the background, hav- 
ing wrapped bundles or parcels laid thereon, the bundles 
having a laundry ticket exposed on the face thereof," 

On J'anuary 15, 1878, a mark for the same class of goods 

was registered by The Buffalo Grape Sugar Company, No, 5,507, the 

essential feature of which was said to consist in "the pictorial 

representation of a Chinaman Ironing clothes," and the ground upon 

which the present registration is refused is that it so closely 



TT 



2. 

resembleB that mark "as to be likely to cause confusion or mistake 

in the minds of the publle or to deceive purchasers." 

This v1g#' Is believed to be correct and therefore reg- 

iaferation was properly refused. It is true that each mark contains 

features not disclosed by the other, for instance, the appellant's 

mark is within a rectangular border and discloses shelves with 

parcels thereon, wljereas the registered mark is within an oval border 

andin place of the shelves discloses a rack upon which clotlies are 

hung, but the esse'nrial idea conveyed by each mark is a Chinese 

laundry with a Chinaman in view ironing clothes at a table. This is 

believed to be the essential feature which would be impressed upon 

purchasers so that they would be likely to be misled. The mere 

fact that there are differences between^ the marks does not warrant 

this office in registering the second mark, for, as said by Comials- 

s loner Duell in ex parte Kaufmann & Blache, 84 ,0*0*, 145 S 

"In ray opinion the office should not re€is.te,r trade- 
marks whieh Would be held to be an infringement upon prior reglstea- 
ed or unregistered trade-marks. x x x A cursory examination of 
a few of the reported trade-mark cases shows that the decisions 
of the courts are uniform in holding that the marks need not be 
identical to constitute infringement." 

In that case, a mark including the pictorial reprssentation 
of a cat in a crouching position and the words "Old Tom" was refused 
registration upon reference to a mark including a different re- 
presentation of a cat standing upon a barrel and the words "Old 
Tom," it being held that the salient feature in each case was the 



I 



^g^gsgg^^ss^ltt^ 



".a-rea/jrimuci eviaycij " •'■".Iffl erf* ai 

-7J6T •^oleiert^ fortB ^oeinos ed o;r bdvetlsd ai weiv slrlT 

aniA^noo Jiijam rioija ;fjBx[;t &;■ :' :I ;i .bewAj-^e-; yr'.r.-M.4 • aaw nol^fl-sdal 

a»*fi,'?j:i3q(T.e !?'■ '^<^ beaoloatfc *on adTtwcTael 

teb-iocf Ijbvo tiA nldit^ el -■ j&"t©*elsoiE erf* a.B©ie«w .no •T»rf;t aleoiaq 

ei« aa fJoIo rloldw noqw aloah eoBoIsali; sevXaris odt ^0 ©oBlq alhoB 

eaenlriO ': -&^i C *^^^ tSnurf 

»i sJtriT .aXciiJJ B c?r> aerfJuIo srtlnotl walv ai osniisnxriD s 'iiJlw Y*tbn«sl 

folrfW enw-^B©l XjBi:.tn©ap.ft en'* ecf o;J b®y9*Xed 
f*'. .n ;> fC .J3©lalfn 6d' 6i x^&^^- ^^ bXi/ow ijecl;,' JbI ^3 aieeArfoiuq 



-axmntoO ^d bis?. 









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3. 



representation of a cat. 

In the present case, the essential feature of the regis- 
tered mark is stated to be the feature which is obviously the es- 
sential feature of the appellant's mark, and, as said in ex .parte 
Flint and Vailing Manufacturing Company, 65 O.CJ., 148, "the benefit 
of the doubt, so far as this office is concerned, should be given to 
the owner of the registered mark»" 

In that case it was also said: 

"It is quite true that a court with proper evidence 
before it might come to the conclusion x x x that the article* 
put on the market by these rival manufacturers were so distinguished 
one from tie other by the acts of the parties and their methods 
of advertising the same that thepubli* was not deceived and 
readilfTeci^nized the distinction between the marks," 

This possibility, however, does not warrant registering a 

mark so nearly resembling a previous mark. The appellant is not 

deprived of all rights by the refusal to register, since ne may 

rely upon his common law right and contest the matter in the 

courts* 

The decision of the examiner of trade-marks is affirmed. 

(Signed) P. I. Allen, 

Commissioner. 

May 24, 1901. 





~^tS^- 



W 



May 8, 1901. 



UNITED STATES PATElsT? OPPICE, 



f/.^ 



iUTj 'Jf^^^T' Ex parte Walter K. Peek. 

MS. D., Vol. 71, page 1?>1. 



Trade-Mark for Com Cures. 



Appeal. 



Application for registration filed February 6, 1901, Ho. 62,628, 



Mr. P, W. Smith Jr. for appellant. 



I 



This is an appeal from the decision of the examiner of 
trade-marks refusing to register the word "Waukeaay" as a trade- 
mark for com oures. 

This mark is undoubtedly a combination and misspelling 
•f the words '*walk" and "easy." The appellant does not admit 
this^ but it would beyond question be so recognized by the public 
iro. general. It is well settled that the mare misspelling of 
words which are not themselves registrable dees not make them 
registrable suid therefore in determing the (question whether the 
mark in this case is registrable, it may be considered as if it 
consul of the words "walk" and "easy." If those words them- 




* "Jl: 




2. 

selves are not registrable, tbey are no more so when misspelled* 
Sx part^e Henderson, 85 O.a,, 453, 

The examiner hold« that tl e mark is a "descriptive and ad* 
vertlBing term, indicative of a quality or characteristic of the 
medicine, * in that it conveys the idea thst by using it a person 
may walk easily « The appellant contends, on the ether hand, that even 
If the mark conveys the idea that by the tse of thj com cure w€.\-_ 
ing is made easyj it is not descriptive of the conpositi^iy.u or 
quality of the article and is registr*l'Jxe« He maintains that it 
gcannot properly be held t^o be descriptive merely because It 
6. e;ge8tB a rexr^ote result which may be brought about by its use, 
in citei in support of his contention the decision of the court 
th 0*Rouke v. Central City Soap Company^ 55 O.G., 857, wherein 
e word "Ant i -washboard" iras sustained as a trade-mark for soap. 

This view is believed to be correct. The word "Waukeasy* 
is perhaps suggestive, but it is not descriptive of the composition 
or qualities of the article or the direct result produced by its 
use. rhe result or condition suggested by tlie word is so remote 
from the article to which it is applied that it cannot be held to 
be on« ofthose descriptive terms which any person has the right" to 
use In describing similar articles and which therefore cannot be 
exclusively appropriated by one person. The mark would be 
lisccgnized by purchasers as being arbitrary and ■'"'■•r-" 



\ .ajj-jj^xa*' 



■<:l0li.n-.,. 

A '.atf ■■ -.9 



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1591 






The prin&py object, purpose and effect of the mark ar« 9 
^} inaicate origin and ownership of the goods and the fact that it 
.♦eiaot^iy suggests sonie advantages which may be derived from the us-e 
of the goods should not prevent its registration. 

The decision of the exaniiner of trad'e-marks is reversed. 



(Signed) P. I. Allen, 
Commissioner. 



May 24, 1901. 



u, 



A 



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Hay '^?>, isoi. 



UITITED STATES PATETTT OFFICE. 



1 



Ex j?arte Sodai'oan Eaklnj^ Pawdor Company. - 



MS.D., Vol. 71, Page 166. 



Trade-MarX for BaKing Fowler. 



Appeal, 



Applioation for registration filed November 12, 1900; Ho. 6n,llS, 



Mr, Wallace A. Bart let t for applicant. 






"This in an appeal fron the action of the examiner of trade- 
marks refusing to register the word •SODAPOAM' as a trale-marK for 
■bayir.g powder in view of the registered mark 'Sea Foam* for the 
same morchandise, 

"The question is whether or not the two marXs so nearly re- 
semble each other 'aH to he likely to cause confusion ot mistal'.e 
in the roind of the puhlic, or to deceive purchasers,' 

"As pointed out i>y the examiner, the distinctive feature of 
■both marks is the word 'foam', and the first letter of the firet 
word of each mark is the same, Ai^pellant argues that the two 
marks are as dissimilar as the wotds sea yrator ani soda water , 
and ref<3rs to the result if sea vAtor wt^re furnished for soda 
water vrhen the latter wan fumis^ed at a soda fountain. It is 
arniued that such a mistake ooul:? *iot happen, 

"Thin arg\ment is not well ^ikon. Sea water and soda water 
are not arbitrary ^^rords; they ft?e descriptive in the highest sense. 
They have a distinct and well l<hoTm meaning and are illustrative of 
some rpeoial quality of the watet referred to. If appellant moans 
to argxie that his mark 'Sodafo^' is distinctive from 'Soa Foam* 
because of itn m.eaning, he hae/ $et forth another ground for rofus- 
inrr its regls + ration, 

»I am of the opinion that a purchaser using ordinary caution 
might easily be deceived and V)^ iJfi danger of confusing appellant's 




161 



marls; for the registered' marK In Beekirip; the clana of gooda to which 
both are applied/ Fx- parte >Merlwctht'ir & Oo-^ €^5 O.G,, 151S; \7hite 
V. Miller, no Fed. Rep., ?^7, 

"The deoiRion of the examiner In affirraed. 

(nignod) E, B. Moore, 

AsRintant Coinminj5ioner, 

June f), 1001, 



■■'ikiaL. ..'., 



mriTRD STATES PATEFT OFFICE. 



Ex parte The Muntzel Drug Co., 
MS.D,, Vol, 71 Page 164. 



Application No. 62,855, filed March 7, 1901, Trade-Mark, 

On appeal from the action of the examiner for refusing to 

register t>ie word "Romo* on trade-marks to- 

Lassiter, 21,631, August 16, 1892, the word "Rheuma* ; and 
Paine, 27,526, December 24, 1895, the word "Rheumiz"; 

the goods in each case being reraldie* for rheiunatismo The 

Commissioner held as follows? 

"The mark sought to be registered is quite different In ap- 
pearance from the registered marks cited. I do not think they ar 
«o similar phonetically as to be likely to cause confusion 
in the mind of the public, or to deceive purchasers. 

The decision of the examiner is reversed." 

E. B. Moore, 

Acting Commissioner. 

June 5, 1901. 



% 



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163 



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^ 





May no, 1901, 

No. so, 910.^ 



June 11, 1901. 

I7NITM3 STATES PATENT OPPlftE. 



Carey v. The New Hone Sewing Mabhine Ooripany, 



Vol. 71 MS.D,, Page fJOS. 



Trade-MarK for Sewing lI%<p|Lnes. 



Appeal. 



Application of Ella J. Carey filed December 8, 1900; No,6R,S48, 

Application of The New Home Sewing Machine Co, filed February 9, 
1892; No. 41, 113. 



Mr. Clayton E. Emig for Carey. 

Mr. Charles P. Dane for The New Home 5?ewing Machine Go,. 



"This Is an appeal by Carey from the decision of the exaniner 
of trade-marks, denying her motion to dissolve the above entitled 
interference. 

"The ismxe is as follows: 

•The word "Hational" or the words "Nev/ National* for 
sowiTig machines, other than wax thread newing machines, and the 
accessories pertaininp; thereto.' 

"The mark of The New Home Sewing Machine Company consists of 
the word 'National', and Carey's consists of the words 'New 
National', both marXs being applied to sewing machines. 

•The motion for dissolution was brought ui^or. the ground that 
there is no interference in fact. 

"The appellant calls attention to certain specific differ- 
ences between the machinery sold by the parties, but such differ- 
ences are immaterial to the question now under consicieration. 



<.^ 



16^ 



U» 



The questidh'^is riot as to the identity of the machines, but in 
whether or not they belong to • the s?¥ne, olasd of merchandise • , 
within the neaning of the trade-marK law. Thin they undoubtedly 
do, even admitting the differences referred to, since they are not 
only both sewing machines, Inxt belong to the Fsame claBs of sewing 
machines. 

»The narKs themselves are substantially the same, since the 
prefix 'How' used by Carey does not change the essential feature 
of the marK, which is the word 'National'. A person familiar with 
The New Home Sewing Machine Gorapany's 'National' machine would 
probably, upon having his attention called to Carey's 'New National' 
machine, assume that it v/an an improved model or new machine, put 
on the marKet by The New Home Sewing Machine Company. The mawKs 
are therefore so similar 'as to be llKely to oauso confusion or 
mistal;o in the mind of the piiblic, or to deceive purchasers', and 
therefore both parties are not entitled to registration. 

.,. "There is an interference in fact^, and therefore the vieolslon 
of "^-he examiner of trade-marks is affirmed." 

(Signed) F, I. Allen^ 

Oommissioner. 



June 11, 1901, 












Juxje JL4, 1901. COPY. 

Ul^ITKD STATES PATKJTT OinflCE, 



Ex parte S, Hecht and Son. 
MS.D., Vol. 71, P. 234. 



Trade-Mark for Cutlery, 



Appeal. 



Application for registration filed March 11, 1901, No. 62,871, 



Messrs. Brlesen and Knauth for applicant. 



This is an appeal from the refusal of the examiner of 
trade-marks to register as a trade-mark for cutlery the arbitrary 
word "Ivy" or the representation of ivy as embodied in a single leafi 

The examiner holds that the representation shown, namely, 
a single leaf, and the word "Ivy* are not true alternatives. 

The appellant argues that the decision in ex parte Taylor 
and Lockett, 93 0,G,, 2631, is controlling in this case. In that 
case the head portion of the conventional rabbit, andthe word 
"Rabbit" were held to be true alternatives and therefore properly 
registrable as such. It is contended by the appellant that to re- 
fuse to register the word "Ivy* and the representation of a single 
ivy leaf as indicative of such would virtually operate to change the 
construction of the existing law as laid down in t?ie decision Taylor 
and Lockett, supra . 

I do not so view this case. As was stated in the case 
above cited; 



"No arbitrary rule can be laid down to cover all cases 
where alternative forms are sought to be registered, 






167 



it is a mere matter of judgement as to whether or not the 
word symbol and the representation would convey to the mind of the 
ordinary purchaser the same thing. It was evidently the conclusion 
of the Commissioner in deciding this question in the above stated 
case that the head of a rabbit would convey to the mind of an or- 
dinary purchaser that it was in fact a rabbit which was shown in 
the picture. This would be evident to any one whether skilled 
in zoology or not. So, too, in the case of Hutchinson et al« v, 
Blumberg, 51 Fed, Rep., 829, referred to by him* A "star" is a 
star whatever may be its number of points. Here, the appellant 
shows a single leaf and claims that it is a true alternative of 
the word symbol "ivy.* 

The appellant argues that the representation of the word 
symbol need only be enough"to indicate the existence of those 
features which every mind instinctively supplies," This proposi- 
tion is well illustrated in the case of the representation of a 
rabbit head. In that case enough was shown to indicate the exist- 
ence of those features which every mind instinctively supplies. 
This, to my mind, was the reason that the representation of a rab- 
bit's head and the word "Rabbit" were held by Commissioner Duell 
to be properly the alternatives of each other, such as would war- 
rant their common registration. 

I am not prepared to hold that the representation of a 
single ivy leaf would not indicate to the purchaser's mind the sim- 
ple word ivy. Ivy is commonly known only by its leafes to per- 
sons hot skilled in the science of botany. So, too, though possi» 
bly in a more general way, are certain other plants, among which 
are lettuce, tobacco, grass, and ferns. The leaves, though shown 
singly, of the last mentioned plants would indicate to the mind 
the plants themselves and not necessarily the leaves only of such 
plants, 

I think the same reasoning applies with sufficient force, 
though perhaps it is not so potent, to the representation of a» 
single ivy leaf as indicative of ivy, inasmuch as the leaf ia the 
common means of identifying the ivy plant. 

The decision of the examiner is reversed; 

June 21, 1901, (Signed) E, B« Moore, 

Assista,nt Commissioner. 




"'Wlr!2r 



'■UiJ 




■v^^y^S-j 



i'- 




d 



-f^. 



11 



June 12, 1901. 




TJNITED STATES PATENT OTTicE, 



Ex parte Thoir.a.s v.. Tabor. 



71 MS.D., rage r^57. 



Trade-MarK for ?/ashirg Solution, 



Appeal. 



Application filed November 9, 1900; No. 62,087, 



Mr. Wallace A. Bartlett for applicant. 



"This is an appeal from the action of the examiner of trade- 
marks refusing to register as a trade-marX for v/ashing solutions 
a mark the essential feature of v/hich - 

'consists of the outline representation of a latin cross, 
V7ith the v;ord "Tabor" on the cross arm thereof, the letter. B 
being about at the center thereof, and also v;ith the vrard "" 
"Tabor" on the vertical arm, reading do'.vnv.'ard, so that the 
same letter B forms the middle letter of both words, ' 
"The examiner says: 

'There is no objection to the registration oi" the represen- 
tation of a latin cross for a washing solution, and if amend- 
ment v/ere made to the statement of essential feature to set 
up merely such representation, registration would be per- 
mitted.' 
"The VTOrd 'Tabor' is merely the name o£ the applicant, and under 
the express provision of the law is not a valid trade-mark and 
cannot be registered. It acquires' no new or arbitrary signifi- 
cance and is not rendered registrable merely because associated 
v;ith an arbitrary symbol - the cross - v/hioh is registrable. 
Not bein$ rer;i;^tr^ble alone, it cannot properly be included as an 
essential feature of a mark to be registered. Ex parte Adriance, 
Piatt & Oo., 20 O.G., 1820. 

"The?'e is nothing so arbitrary and fanciful in the vray in 
rhich the name is anrociated with the cToss as to destroy its 



i 



d 



''^.y ■ 



169 



identity, since it is merely printed on the cross. It is true 
that it can be read vertically or horizontally, and a single letter 
B is used in both readings, i;ijit this does not destroy the identity 
of the name. The particular manner in v/hich it is printed does 
not change its character or render it arbitrary in the sense that 
others v/ould not have the right to print it in tiie same way. It is 
no more arbitrary than v^ould be printing it in script or any other 
particular form of tj^pe v/hicli is chosen. It may be admitted that 
the letters in the name, if arbitrarily arranged, so as to destroy 
the identity of the name, v/oxild constitute a valid trade-mark, 
but so long as they are printed one after the other, in regular 
order, so as to spell the 'name in the usual way, their arrangement 
cannot he considered arbitrary. This is true whether they are 
printed in a vertical or horizontal line, or in both, since the 
essential feature v/hich at once striker- the observer is the name, 
and the individual letters are lost sight of, 

"The mark disclosed consists of tv/o independent essential 
features; the cross, which is probably registrable, and the appli- 
cant's name, which is not registrable. The name cannot be properly 
included as an essential feature of a registered mark. 

"The action of the exam.iner of trade-marks, refusing regis- 
tration, is affirtaed, " 

(Signed) F, I, Allen, 

Commissioner, 

June ?;5, 1901, 







^^^m 



^ .'->-' UNITED STATES PATEIJT OPFICE. 



^ 



T;eyinar. v. '^'^ ■"'■r''.crg. 



108 Fed. Pep., Cf^. 



Since the decision of the St;preFie Court in Llill Co, v. Alcorn, 
150 U, s., 4C0, it has been considered a settled doctrine that a 
person cannot acquire a right to the exclusive use of a geograph- 
ical or proper name as a trade-marlc proper. 




UNITED STATES PATENT OFFICE. 



Ex parte Maurice stransky. 



71 n?t.-D., r95. 



Trade-::arX for Cleaiiing Material, 



Appeal , 



Application for registration filed April G, 1901; No, 6S,097, 



Francis H. Eichards attorney for appellant. 



On appeal from the action of the examiner in refusing to 
register the v;ord "CLEEIT-EEZY" as a trade-mark for a cleaning 
material, the Commissioner said as follov/s: 

"After full consideration of the appellant's brief, it is held 
that the word 'Cleen-Eezy' as applied to a cleaning material is 
merely descriptive and falls v/ithin the same class of cases as 
•Fitneeasy' and «Painease», heretofore refused registration. 

"The decision of the examiner of trade-marks is affirmed." 

(Signed) F. I. Allen, 

Commissioner. 
June 29^ 1901. 



^.. 






?«r'j:,>;;.'.-.-' 



t^. 



mm.', nf ' 




May 14, 1901, (COPY.) May 25^^1901. 



No, 20,699, 



m 



UNITED STATES PATENT OFFICE. 



Broderlck and Bascom Rop« Co, v, Lesehen and Sons S^4B-Co« 



'hj^ 



Trade-Mark for Wire Rope, 



Appeal on Motion, 



Application of the Broderick & Bascom Rope Co, filed October 31, 
1900, Noo 62,034, , 

Certificate of Registration issued to A, leschen & Sons Rope Go, 
December 4, 1900, No, 35,552» S 



Messrs, Higdon 8c Longan and Mr. R. F, Hains for Broderick • Bas- 

oom Rope Co, 
Messrs, Knight Bros, for Leschen & Sons Rope Co, 



This is an appeal by the Broderick & Bascom Rope Com~ 
pany from the decision of the examiner of trade-marks denying its 
motion to disolve the above-entitled interference. 

The grounds of appeal are that the examiner erred in 
holding that there is an interference in fact and that there was 
no irregularity in the declaration. 

The issue is: 

"The streak of distinctive color produced in or applied 
to a wire rope, for wire ropes." ^' 

f , In each application the mark is said to be for wire 
rope, and in each the essential features are described in the 
words of the issue. As drawn, therefore, there is obviously an 
interference in fact betv,reen tVie two applications, since they 
?ould not both be re£>;istered without registering two marks for 



^ 



ITc 



IUa« 



the same thing. In the appellant's application reference is 
made particularly to the use of an orange-colorecl strand in the 
rope, and to the fact that such color is used entirely, whereas 
in A. Leschen & Sons Rope Company's application reference is made 
particularly to a red strand which it is claimed is the only color 
used by that company. It is claimed that the marks are specific- 
ally different and distinguishable and that each case should be 
construed as limited to the applicant's particular mark, and when 
so limited there is no interference in fact. 

This contention is, however, not well founded. Neither 
partj^ has limited it self_tojthej)articular color used, and evVn" 
if it had, it could hardly be held that they did not in effect 
cover the same mark, since they would differ merely in the color 
of the mark. It is well settled that a mere difference in color 
does not make a mark registrable, 
^ The principle contention on behalf of the appellant is 

that the issue is too broad and indefinite to be the subject- 
matter of a lawful trade-mark,- The examiner was of a different 
opinion, however, and by analogy to the practice relating to pat- 
ents, there is no aapail from a favorable action by him on a ques- 
tion of this kind. The authority of the Commissioner to consider 
such matters is recognised, byt it is not believed to be proper 
paaatice to review and reverse a favorable decision on the ques- 
tion of the registrability of a trade-mark, any more than to take 
such action as to a favorable decision in a patent case. This 
will be done only in a clear case. 

The applicant's brief and the examiner's decision, have, 
however, been considered, and it is held that the circtostances 
do not warrant a reversal of the examiner's action. The authori- 
ties support his statement that the mark is a lawful trade-mark 
and is sufficiently definite, 

No irregularity in the declaration of the interference 
is seen. 

The decision of the examiner of trade-marks refusing 
to disolve the interference is affirmed, 

(Signed) P. I. Allen, 

Commissioner, 

May 25, 1901. 




0f 







7' 4 



UNITED STATES PATENT OFFICE. 



Ex parte The American Tobacco Co, 



MS.D. Vol. 71, Page 352. 



Trade-Mark. 



Application filed April 29, 1901; serial No. 63,263. 



On appeal from the action of the examiner in refusing to 
register a mark wherein the words "Ole Virglnny" were claimed, 
and wherein the fac-simile also showed the coat-of-aims of the 
State of Virginia, for the reason that it was not proper to dis- 
close the coat-of-aiTOs of a State or nation, the Coramissioner held 
as follows: 

"The coat of arms of a state or nation cannot properly be ap- 
propriated as a trade-mark by anyone. Not be 1 ng capable of ap- 
propriation alone, it cannot be registered as an essential feature 
of a mark. The aims of Virginia in this case constitute an essen- 
tial feature of the mark disclosed and therefore it is not regis- 
trable. 

"The decision of the examiner of trade-narks is af finned, " 



175' 



(Signed) F. I. Allen, 

Commissioner, 



July 10, 1901, 



176 



(p- 




/ /■i/Z'. 

UNITED STATES PATENT OFFICE. 



Ex t>arte The United States Playing Card Oo, 



MS.D. Vol. 71, Page S24, 



Trade -Mark. 



Application filed April 10, 1901; No. 63,106. 



Messrs. Briesen & Knauth for appellant. 



"This is an appeal from the decision of the examiner of 
trade-marks, refusing to register the word 'MOBILE' as a trade- 
inarK for playing cards. 

"The exaininer holds that the word 'MOBILE' has primarily a 
geographical meaning, and cites the well-K2iovm city and county of 
that name in the State of Alabama. 

"The petitioner states that: 
•It is a well established and v;ell recognized rule of law that a 
geographical name cannot he a proper trade-mark, but this rule is 
subject to numerous exceptions,' 

"The exception urged for this case is that 'where the fanciful 
meaning is more apparent than the geographical meaning, registra- 
tion might be allowed.' The petitioner claims that: 

•The enormous industry in mobiles which has revolutionized 
the art of traveling within the last few years, has made the word 
as applied to vehicles far more familiar to English speaking 
people, than it ever was as applied to the city of Mobile with a 
population of 30,000.' 

"The city of Mobile is well known. It is the principal sea- 
port of the State of Alabama, situated oii Mobile Bay. Its position 
is noted, not only as one of the principal ports on the Gulf of 
Mexico, but because of the historic battle of Mobile Bay, The word 
'Mobile', used as a portion of the v/ords 'Automobile', 'Loco- 
mobile', &o., is only of recent date, 

••I am of the opinion that the rule laid dovm in the decision 
in ex parte Little & Co., 86 O.G., 1221» applies to this case. 
The rule is as jfollows: 



Ti 



'It being once admitted that a word sought to be registered 
as a trade-mark has a geographical meaning, it should be the rule 
of the office not to register such word unless it appears beyond a 
shadow of a doubt not only that its fanciful or arbitrary meaning 
is so generally known and understood that the meaning of the name 
would be at once recognized, but, furthermore, that the name could 
not be rightfully used upon the same class of goods by any one 
ihaking them in the locality bearing the name,' 

"In this case it must be admitted that 'Mobile' has a geo- 
graphical meaning. It does not appear beyond a sftado?/ of a doubt 
that its fanciful or arbitrary meaning is so generally known that 
this meaning of the name v/ould be at once recognized, to the ex- 
clusion of its geographical meaning. It is very clear that the 
mark covild be rightfully used upon the same class of goods by any 
one making them in the city of Mobile, 

"The decision of the examiner of trade-marks is affirmed," 



(Signed) E, B, Moore, 

Assistant Commissioner, 



July 0, 1901. 







UNITED STATES PATENT OFPICE, 



Ex parte Alfred H. Peats. 



MS.D. Vol. 71, Page 367. 



Trade-Mark for Belt Supporters, 



Application filed May 17, 1901; No. 63,404, 



Mr. C. V. Edwards for applicant. 



This is an appeal from the refusal of the examiner of trade- 
marks to register the word "Yale" as a trade-mark for belt sup- 
porters. 

The word "Yale" is not an arbitrary word. It is true that to 
many people it would signify the great university at New Haven, 
Connecticut, named in honor of the historic personage Elihu Yale, 
The word "Yale" has, however, a geographical significance, and is 
also a more or less common surname. Each of these facts has been 
shown to be true by the examiiTer. It is clear, then, that the 
word "Yale" is not such an arbitrary word as would make it the sole 
property of any one individual. 

The v/ord "Yale" corresponlis in all respects to the word "Bow- 
doin" which was refused registration as a trade-mark for coffee 




179 1 



by Mr. Oornmissioner Duell in ex parte Shav;, Haranond & Carney, 66 

MS.D., 2S9. 

The petitioner argues that - 

"Almost xmiversally to speaX of an article as a Yale locK, 
or a Yale radiator, or Yale teme plate, would be to indicate that 
the article had something to do with carefully made mechanism," 

This argvunent that the word "Yale" has a special significance 
la that the articles to which it refers are carefully made pieces 
of mechanism sets forth another ground for refusing registration - 
that of its having a descriptive significance. 

The decision of the examiner is affirmed. 



(Signed) E. B, Moore, 

Acting Commissioner, 



July 11, 1901. 






UNITED STATES PATENT OFFICE , 



Ex parte The Columbia Incandescent Lamp Co., 



MS.D. Vol. 71, Page 374. 



Trade-Mark for Incandescent Lamps, 



Application for registration filed April 29, 1901; No. 63, 267. 



Messrs. Carr & Carr for applicant. 



"This is an appeal from the action of the examiner in refusing 
to register as a trade-mark for incandescent lamps the word 
'Coliimbia' arranged in the form of a circular band and the symbol 
[g_. Inside of said band. 



C.P. 

"The petitioner states that - 

•This trade-mark has generally been arranged as shown in 
the accompanying fac-simile, in which the letter C is made to form 
about three-fourths of the circular band, and the band is completed 
by the letters "olumbia", ' 

"The examiner states that there is no objection to the regis- 
tration of either the letters W, or to the capital letter 'C 

C.P. 
inclosing these letters, provided the v;ord » Columbia' be made a 

non-essential feature of the mark, or be eliminated from the state- 
ment and fac-simile. 



-..■■, I'-ftiiui.'' 




ffj > 'KT!Pm^ -• »,- •■5-»™?.'»,y-: .^ ■ , ,,^.v- . 



"in the decision of the Supreme Court of the United States 
in Goliimbia Mill Co. v. Alcorn, 66 O.G. , 1016, it is held that the 
word « Columbia* is not a valid trade-mark, for the reason that it 
has a geographical significance. 

"The petitioner distinctly states that the trade-mark 'con- 
sists of the word woolurabia"* arranged in a certain way, and a cer- 
tain symbol in connection therewith, 

"The word « Columbia* is common property. The portion of the 

mark made up of the letters W. whether arranged inside the letter 

C.P. 
C or not, is probably a valid trade-mark. 

"The fact that the petitioner has arranged the letters which 
spell the word 'Columbia' in an arbitrary or fanciful way does not 
alter the fact that the word so written is the word 'Columbia', 
The letters 'olumbia' do not form any portion of the letter C, 
A glance at the mark gives the impression to the reader that 'Colum^ 
bia* is the essential feature of the mark. 

"If the mark is held in any position before the eye, the word 
•Ooliimbia' plainly appears. It is well settled that a mark which 
is common property is not made the property of any one individual 
by associating with it certain arbitrary symbols which in them- 
selves may be registrable. Ex parte Farnura & Co., 18 0.<}. , 41S; 
ex parte Adriance, Piatt & Co., 20 O.G. , 1820; ex parte Weil, 83 
O.G., 1002; ex parte Tabor, 71 MS, Dec, 257. 

"The decision of the examiner is affirmed." 

(Signed) E. B. Moore, 
July 12, 1901, Acting Commissioner, 



UNITED STATES PATENT OFFICE. 



I 



Ex parte Alfred H. Peats, 



Endorsed August 3, 1901, 



Petition for Rehearing, 



Trade-MarK. 



In my decision of July 11, 1901, it was stated that the word 
"Yale" has "a geographical significance and is also a more or less 
common surname," 

That these statements are correct is shovm by the citations 
of record made by the examiner, Tliey have not been disproved by 
applicant. 

The appearance of the word "Yale" in the postal guide is not 
the sole evidence of its geographical significance. In the postal 
guide, however, it appears as the name of more than thirty towns, 
thus showing that the geographical significance is quite general. 

For the reasons above referred to, it is evident that the 
word "Yale" is not such an arbitrary word as would make it the 
sole property of any one individual. 

The petition for a rehearing must be denied, 

(Signed) E. B. Moore, 

Acting Commissioner. 



M 




181 






UNITED STATES PATENT OFFICE, 
some iiiicx"j :ii If. 



'!^e Farmers Manuf^^ite#''ilbTnp€QlV v*.'" W'."^ R. Harrlisdif^ Gorapany, 

^rticulfi '!^f ai; 71 IIS 4».* ,434. 

Trade-MarK. for Agricultural implements. 



Appeal from Examiner of Interferences, f^® 



Application of The Farmers Manufacturing Co. filed August 11, 
1900, No. 61,690. '*-S not e- 

Application of W, R. Harrison & Co, filed August 3, 1900, 
No. 61,69S. 



>.J- ;.- J. . . 



; 1- 1 parties were 
Mr, Vto. L. Pierce for The Farmers Manufacturing Co. 

Mr. P. E, Tasker for v/. R. Harrison & Co, 



'i<i 



■.. :-■< or, 

This is an appeal by Harrison & Company from the decision of 

©AT.entsivoly advertised prior 

the examiner of interferences awarding to The Farmers Manufacturing 

Company priority of adoption of a trade-mark for feed cutters and 

■■raJ - ^.y. or ' . k r :.!:.>;•■ i; t '!>; -rieanii.^; of the xa.vr, 

carriers, consisting of the word "Cyclone". 

Harrison &. Company raise the preliminary question whether or 
not certain depositions on behalf of The Fanriers Manufacturing 
Company, taken before 'JL, V7, Caskey as a special examiner, should 
be stricken from the record. It appears that at the time the de- 
positions were taken, counsel for Harrison & Company consented that 
M. W. Caskey should act as special examiner to take the deposi- 
tions. By the request of opposing counsel for such consent he was 



'%>' 



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.aoonsTQ-iis.tnl 'iq.TeniiifiBxa mo-rlt iBoqqA 



rnnr o 4. .088,18 .oW ,OOGI 

,OOGI ,o ^3^^A i50i±^ .00 ^ fioa.tTTBH .H..W Ip wiJi^piXd^A 

.00 sriXTi/i-oBli/fiBM aTonrtB-iT sriT rrol eoiaiq .j ,m ,rl 



lo ffbiai. 
SfTX'ix/^ofilx/riBM aioOTB^ ertT o* sai£.TBW£ aQone-ielorQ^rTt lo TOfULTrBxe orf:^ 

."ertoIOYO" fiiow ©rf* 'io sn.t^axarroo ^btbIitbo 

TO IQffjQrfw rrrji-f^t^rm 

■■<3Xbv ,\;rfj3(i2ToO 
-6fc 9rfi offlxt eri^ o^B *BrI^ niBBqqs .:,inoot oHi moil nspfol^^R en 

^&^ns , ^i£6v+ aT8W atioUlaoq 
-iaoq-Qfc ©ilcr e.^£f- cerilfuBxa iBloaqa rb tOB foli/oria Yf:./f^BO .W .M 







fe^i >'■■'■ TWBBJT'-,'" ■ *•■ ■•T^v; 



IB I 



msaammmm^i 



9 

UB© 

in effect notified of some informality in the proceedings^ and 

being so placed upon his guard it was his duty to have informed 

....■•,4^% tl-:<? dec1>?ln;i ii-:ap^^ "iye in favor of T^e ¥ 

himself of the particular informality and to have then made his 

objection. Having failed to make any objection when the opposing 

PI rM ?5ot create a rig^rst to a maxk where 

coTinsel could have corrected the informality, he will not now be 
v ex ■ .ovj-at 

heard to raise it. 

(5-?- n. law '37 

The Farmers Itonufacturing Company has not established by its 
evidence an adoption and use of the mark upon its goods until some 
time in August, 1900, after the applications of both parties were 
filed, although some months prior to that time, at a meeting of the 
stockholders of the company, it was decided to use the word 

"Cyclone" as a trade-mark, and its intention to put the goods on 

,.-•;,, ■-•';■ '- / li': :>■■•■ -iti^d i:^-^:jr^-' In fhl*: 

the market under that name had been extensively advertised prior 
to July 1st, Tlie mere advertisement of its intention cannot be 
considered an adoption of the mark within the meaning of the law. 

Schneider v. Williams, 44 0,G., 1400, 

- n to - 

Harrison & Company claim to have considered the question of 
adopting the mark "Cyclone" as early as 1896, but they did not 
actually apply it to the goods until July S, 1900, when they 
shipped two machines so marked to a customer or agent in Mexico, 
They seem to have used the mark on no other machines until Decem- 
ber, 1900, Their whole case rests upon the shipment to Iviexico, 



J, _ —Jfl 



fcfts ,a8n±£ia90o*r(r erit n± Y^'-tlBflrrolni amos lo batltfoa toelle n± 

airi ei)F>ra nerf-J- evBrf oi bns x^tLBitfiolat iBlsjoiLfisq erlt lo 1Lqbbi1.A 

sni:3oq*io erf.t norfw nolioscffo ^i^ eXsni oi boIiBl sxixvbH .noii'ootcfo 

ecf won i'on XIxw eri ,-^*xIfliifio'inJt sxf* £>oiooaioo evBrf fclx/oo loem/oo 

.J'i oa±Bi oi" biBeri 

8.tx ycT fcerfsxIcfBta© ton asri Y^BcpooD snlTU^OBlxinsil aTonncBl er(T 

Qinoa xxvJiuj a£)Oos a^-t noli/ Xtbh arid" lo sax/ biiB uo-ujnoJjB ros aoneJblva 

eiQW 8QiJ"TBq fftocf lo anoxJ"£o±Icrq:B oriJ- aoi'^B ,OOGI ,o^axJ5iJ•A n± emit 

©rid' lo Sfrl.toyfn i; oB ^acixi :fBri^ oJ' loxit; aritxiom omoa a-^uodiLB fbaLtt 

l5tow ari^ &8U oi b&btoeb bbw ^fJ: ^yn^qmoo erii lo RTOfclorfXoota 

no ac'Oos ijii^ .^tsq, oi noxJneJ'nx sit bnt; e,i'iii::i-9£iBi.t b as "onoIoxO" 

rolTq fcoaioTOvfeB ■\jIev±sn9J'X9 rrsacf bBii aniei^ iBrt: lafinx; iJ'©;ft:Brri erii" 

9d ioc'Sis'.o ncxd-notfix atx 'to JasiaaGXJTavx-B a-xoai ailT ,J"eI ylixL o^ 

,wBl axi ..nJrnBam arit ffxrfJlw Xtbhi erf;J ;tiqoi)B riB beiebtanoo 

,00tX ,.0,0 :^ ,ani6XlIJ:f/ ,v aoijJtanrfoB 
lo rroxtaoifp arft ijaiaMsftoo avBrf o.+ wtBlo YftB^itioO r* noatTTBH 

J-orr btb ■^Qiii iU(S ,9Q8I as "iLiBe p.b "GnoIoyO" jIibsi silt srixJ-qofiB 

Yorf* rrarfw ,OOGI ,8 ^iIi/L lid'iur bSoob art* oi it \LqqR ^:IIbuJob 

,ooij-:oM at ia&gB no israoiauo b oi ^©Xi/?m oa aan.fcrfoBm ovi beqcitde 

-niaoaCI Itiau aanlrfoBCi toriio on no X-rBm orii tosu evBrf oi Diaae voriT 

.ooixolvl oi inomqtciQ eiit rtoqi; staarr obbo alortw liaitT ,0001 ,i 





t^- 



t'8 



S 

If It constituted such adoption and use of the marX as to give 
them a conmon^faw right to it in this country, they must prevail; 
otherwise the decision must be in favor of The Farmers Manufactur- 
ing Company, you eaj'-B 

The trade-marK statutes do not create a right to a mark where 
none existed at common law, hut merely provide for the registra- 
tion of such marfcs as have become property by common law if they 

thiav 

have also been used in commerce with foreign nations or the Indian 
tribes. It is well settled that use in a foreign country without 
such use in this country as to give a common law right to the marK 
here, does not entitle a party to registration, Richter v. Rey- 
nolds, 67 0,G,, 404; Leprince v. Her & Morris, 92 0,G. , 189, 
In these cited cases it was also held that limited sales in this 
coiintry by a foreign manufacturer upon especial orders to supply 
particular customers, did r^ot give a common law right, since they 
did not constitute a use of the mark *in such circumstances, as to 
publicity and length of lise, as to show an intention to adopt it 
as a trade-mark." ' mention of 

'?hlle a case where the goods were manufactured and marked in 
this country, although sdld abroad^ may properly be regarded as3, 
standing upon a different footing fr<Mn a case v/here they were both 
«ade and sold abroad, and might in some oases be held to establish 
a common law right here, the business must be carried on v/ith such 



^ 



-ta;:^0£'imBi. Baa^-rrxB-? aril 'lo Tov^ei rri « r + 

.YnjBcprsoO j 

^ ,w«i noflunoo ^^5 be&atxQ an 

vc< YJTe^oT, smoooo eVBrt ae a^rem rfo„a to no 
.^.-« e.. .0 ^„...„ ^,,,„, ,,,„ ^„^^^^ ^^.^ ^^^^ ^^^^ ^^^^ ^^^ 

-VeK .V .e«o.. ..o...,.a..e. o. .^., . .,,,,„, ,„„ ^^^^ ^^'^^ 

•oex ,.o.o .0 .a,„„, , „,, .,, ^^_^^^^^ _.^^^ ^_^^^ ^^ ^^^^^ 

Bxrfcf nx aeXBa LacMfflll ^Brft Merf calf, p«w f •- 

evis ton bib ,8Taino.tax;o TBXx/o±.t,cBc 
o. .. ,aao^....,,. ,,,, „,„ ^^ . ^ ^ ^^^^^^^^^^ ^^^ ^^^ 

- ^.ob. 0. .0X..3... ^ .o.a o. a. ,e.. .. ..3,,, ,,, ^,.^^^^^^ 

« .a...,3, e. «.e,o., v.. ..«„* ,..., ,,„„,,,, ,„,„,„^ ^^^, 
«*oo- ..e. V... «...,.. .aao « „o« ,„«oc. .™,e'.t. . .0^. ..n..... 
r.au..,ae 0. Mo. o. aeeao 0.0a „, «,,„ ,„, .,,^,, ,,„^ ^ ^^^ 
I'-" '- -TO ^o.xx.a*a .a« aae„ia« «,, ,,,3^ ^3,^ „«x',,o-oo . 



vrpir' ■ 



m 



IF 



publicity as to indicate to others here an intention to adopt the 

•IV ox the cor.eliision O'^-^i -^f-vci, ^i .. 
marX as a trade-mark. The single shipment to Mexico is not be- 

• - ,■ s "f ^ ■'>_!. ", , - . t ^ : •. .> J -h <j ^J ■ jT 

lieved to have been such public use of the mark as to establish 

in the adoption or the vrmrk, rai.sea oy Ti.e l-arQer^ . .-^.--x, ffio- 
the right of Harrison & Company to it. F. G. Harrison says that 

the name "Cyclone" was marked with a stencil upon the machines, 

and that : 

"They were covered with paper over the parts stenciled. 

"X-Q, 47. What was the reason for this? 

"Simply because we had application papers in for trade-mark 
and competitors in the same vicinity who would try to prevent us 
from getting this trade-mark and we did it to anticipate any moves 
on their part, 

"X-Q, 48, In fact, you have told certain people, have you not, 
to say nothing about this Mexican shipment vd.th the word Cyclone 
thereon, as you virished to keep the fact secret that you had so 
marked the machine? 

"It undoubtedly is," 

It seems clear that such secret use of the mark covild not in- 
form others in this country of their intention to adopt it as a 
trade-mark. The personal intentions of the members of the company 
are inconsequential so long as the mark was not actually used in 
such a way as to inform others in this country of their inten- 
tions. The right to a mark arises not from the intention of the 
user, but from the manner of its use. Even if the shipment to 
Mexico on July 8d be regarded as a bona fide sale of the machines, 
a question not free from doubt, it was not made under such circum- 
stances as to establish the right of Harrison & Company. 






erfJ iqobB oi ttot^aeiiil hb ©T©ri eioAto oi etBoital oi as \itolLc 

-ea J^orr ax ooxxqM o* JaGfliq:xria ©Xgrria e>f(T .XiBin-sfcBi^ s bb X'^ 

riailcfBi^ae oi' &b Xtboi eri* lo eeu otLduq rioua neecr ev^ri od" bQVi 

tBrit avBa noaiiisH ,f) .^ ,tt. oi^ YnsqraoD :.& rioalTiBH "io ,,i'/ialrt \ 

^asnldoBm etit noqii Xioneia & rfcfxw fcej^iBai bbw "onoIOYD" emen < 

rtBrfJ- 1 

.I>oXxofr9*a B^iBq arid- "cavo aeqBQ xl^tiw f^oievoo stow \3riT" 

Taxrii' tot noaB9i sffi aBW i-jsrlW ,Vi^ .P-X" 
?Cii?nf-9itB'rt lol n± eioqeq: noic^BoiXqi^B ^f>^ ©w aejJBOscf YXcirn±3« 
au driaveiq od" y^* jblxfow orfw -(f^tifixoxv aiaBs ori* n± aioixJ'eciraoo J 
asvora xfiB 8*Bq±oxlnB oi tt btb ew fcrrs XiBra-ebBii' aJjrf t gnii^sg na 

.J'TBq ax6ri* 
^torr i/oY QVfifl fOlqoeq itiB^Trto Mod' ovBri iroy ^iojet nl ,8^ ,p-X" 
erroIOYO £>tow orft rftxw ifreciqirla iXBoixsM airf-t ixrocfB anJirflon ybb 
oa feBri uo'^ iBxfd" iarooa IobI eriJ- qsoX od- fcenalw jjoy as ,noeT< 

Ssnlrlofim erii fcaX* 
"*ai; -(cJLbQdcrjjotnj:/ *!" 

-rr± ton foljt;oo XiBra ©rf* "lo qhu deiooa rfoj:/a iBrfj- iboIo ameos il 

B aB d"! i^qo&B of aoliaefni. iledi lo X'^inssoo alffi n± aierld'o at 

■^friB-Tofori arfi to BTacIraam erfd "to arroxirtsini; iBnonrroq sifT .XTBitr-or^j 

fix boBU YllBijd'OB d'ort aBw xisnt 811* as bHoI oa Ib itnax/poaxiooni: < 

-nstrri ftart* to Yiinx/oo sirft rri aioff^^^o rrrrolni ni rb vbw j^ -ff 

Sri* to nottaetnt edi raorrl ton aeaiTiB Xtbhi b oi" irfsli adl ,8fi< 

o* dnsfflqiflB edt "it xievS .©ajj 3*x lo lemtBra arid" nxoni J'xxcf ,xi 

,a9rrlrfo«flr arCd" 'io sIbu obxl Bnocf b sb i^ofc-rBSerr: scf f)8 Y-Lt/X» no ooi: 

-mifortlo iioiJB lofcm; efcara d'on sbw d'i , dJ;;o£) fflo-j:! oeil d-on rroldaei/j 

.YOBqinoO 38 rioaiiriBH lo trisxt erid- riaxIcfsJaa od" eB eaooi 




^■"'w- 



'P:^ 



5 

In view of the conclusion announced above, it is unnecessary 
to consider the question of fraud on the part of Harrison & Oom- 
pany in the adoption of the mark, raised by The Farmers Manufac- 
turing Company, 

The decision of the examiner of interferences, awarding pri- 
ority to The Farmers Manufacturing Company, is affirmed. 

(Signed) F. I, Allen, 

Commissioner, 

August IS, 1901. 




.^ 



I 



.. vooB ^....,,01:/:^; noxaxilonoo ©rf;^ lo walv rri 
' '---— ^- ^o loatmxB ont 10 noxBxooL srfT 





'" i:;*%- 



'T^. 'V •■' ■ 






H 



18 



o)^^E 



ti 



^^ ^P '^^^^W^ 



UlTITED STATES PATEMT OFFICE . 

Ex parte Edwin C, Burt Company. 
MS. D., Vol. 71 page 423, 



On motion for rehearing it ras held as follows: 

"This petition cannot be granted for the reason that a 
decision once promulgated cannot be amended as requested by the 
petitioner. 

•.'The only way to araend a decision is to render a new decision 
upon a rej^earing. 

SA rehearing has been denied in this case for the reason that no 
error is found in the decision rendered which would warrant the grant 
of a rehearing. 

"The last full paragraph on page 3 of ^.he decision rendered 
July 11, 1901, is not a verbatim quotation from the brief filed by 
the petitioner. No serious error is found in the statement in said 
paragraph. 

"I will state, however, that when considering the decisionK of 
the United States Supreme Court in Singer Manufacturing Co. v. 
June Manufacturing Co., referred to by the petitioner, the same 
was considered in connection with the latter C. C, A. decisions 
which have been rendered in which said decision was considered, " 

(Signed) E. B. Moore, 

Acting Commissioner, 

July 27, 1901!! 



^ 



^Q 5, 1901, 



Tf^S^^rS'™:^" 



■"^mmmtmim 



f^' *-^ ./'A^^£> 



t:NrA'sD sx/^'ES paten*!: office, 



EX pairte Sdwin Co Burt eoinpany, 
,- MS, D, , Vol, 71, p,370, 

6 



Trade-Mark for Boots and Shoes <. 



^, ■• 1 1 

Appeal , 



pplication for, registration filed April 10, 1901, No^63»D99^ tr? 



ijis Edith J, Griswoid for applicant 



iiT?" ^' -. ,1 ■■ iar:t.' -&-nr 



This is an appeal fron the refusal of tht;;., tix_..aminer, of 
i'^de-marlts to register the word "Burt" as a trade-mark for X)cots 
nd shofc^o 



The reasons 'jTof the appeaj. 0.3 statiipdxiy i' he appellant a?es 

"Ist = The Examiner erred in refusing to register the 

word ':^rt' used as a trade-nark since 186c X)y applicant and 
%^ predecessots, 

"2ndo The Examiner erred in ignoring the trade-mark Act 

of August 5, 1883, as applied to this .cca.:>eo- .■;■•!; 

"3rd^ 'Tci^, Examiner erred in holding that t'^e^Coamis- 
sioher's decisions 'In " ex parte Gale MfS» Co,, S5-:0vS6.|. 1907, 

and ex part e Buffalo Pitts, S9 -0,0, ,,3069, are autl^prity for 
refusals' r3"i-:;t rat lop of this particular r^arl^^* " 

" 'The appellant states that the word "Burt" has xieen used 

Y it^and its predeQesBO'^s'^g* a trade^mark'x'dr r)6ot«.<,£onu ii^ sinse 



'^^^N.X^^^X 



.EOi'n'"Hc wiaTAi eaTAi'S ca'i'io 



3 



. EeociE IjCI£. bJoocT 101 JrtBM-eLBaT 



.iBaqqA 



,(?^0,^d„oW ,1091 ,01 IxiqA Lulil n--;! cTbi J-2l::::8a 10I noiJx}»J 



, ja.ooilqqB '10I Mowrii.O .1, i.o± 



a^ooa 10I jI'iBai-aL^.Bicr b as "J^uH" .tiov; en^ i»J"::;i39i oi ajfusa-s 

. aaorJc 

JOiB d-n£ll6qqB Qrl^t vc^ JbdJBJe cc ^jssqq/; arfJ loT; anoaBsi en'T 

Oi~:J lo^f.ige-i a J ^niai/l&i ni foaiia isnicriBxZ sriT oJal" 

bnc JTicslIqq.6 ^co" OdSI eonxK jfiBm-aLBi^ B so heey ' J'lxjf' ' feiOv. 

SoP. TfsiBQi-BbBi i erf J ^.niiongi ni baaie leniiaBxa aril' pbns" 

oar.sc riri^ oJ- bsxiqqi? ac ,S88I ,a J-sxQXf' ' .^ 
-sxronrcO Qcii J-criJ 3ax5Iori nl naiia aanxcoBxS trfT t£)i^" 
^VOPI joO.o 3B ,oO0 «2'^M sIbO ajiisg xa nx Knoxcxoal:) a'lanoi::. 
ic'i Y^i'K fid-xrc 8IB ,9dOS ,«r).o 9F ,eJ-J-x<T cJ£l"ixfg eJig-q xe ban 

".rfiBtn iBljjoxJ^Bq i.iiis lo noi>t£airi ei SJil8i;'i.&'"i 

bsajLT nescr sbiI " J^jja" biovi arij jBrfj ae^B^e JrmllaqqB oni 

asnis eeoAs basi «d, ; '/ -lo'i ^fiBra-afiEi J- • cb eioaeas^afiia'iq pJ"! forx 




W1» 



oout't^c/'year I860, that it laras adopted at. that time X)'ecause slAce 

he year"*lS43 the naas 'Burt' xiecan a process of forclnr itself int 

hj plnd.i' 'jf tlie piroli® as a desi^jnat ion f.pr shoes put upon 

he oaricet W a certain eBta\olishm'ont ," ' ■.''|'he.,,fc;,ct, is well Khsvjn, 

nd it i3 adaitted xrj the applicant, that 

ne Edwirf C, Burt , 

he vrard "Burt" is 

ompany, ... 

The appellant states that "dealers throughout '.the lA^ole 
rorld now reaognize that honestly to fill, orders i'pr «Burt shoos' 
[he7 Eust aotain^thfcfii from th^i r.pplicr.nt in this cp.oe or Its lawfu.l 
a^ent , " and it' i^^ therefore contended that "the Surname 'Burt' 
has risen a-^qye the plane of its fellov/s, and has x>ecorae, when 



■.|he^,,f.£iCt 

'it is the suctsessbi; of 
fac "oundsr jof the \3usiness carried on.'py- it <. 
the salient Teature of the name" of the ''appellant 



applied to 



\Baro 



5ho8s, an arbitrary mark. 

The appellant states that the 
trads-marK, is not asKen Xiy it 



ret"istration of this name 
as " s elsK Inr t o ox^t a in 



a\trad6-marK x>y resist rat ion," The reasons why the appellant 

novf ?5Ks registration of the; word "Burt" as a trade-mark are statjgd 

vy it as follows: 



185 



"As it ih \fel1 XnoTjn, in most f or eic^l countries trade-marK 
rights are contLit ional on, and d.e-ermined ^y» registration, 
and applicant now deems It proper to assert its right in cer- 
tain foreign countries, ^ut in tefi of the principle count rie?,* 
hoffle registration 'is Thirst required," *" 



It is urged \>y tns appellant that inasmuch as our regls- 
i^tion laws are for the very purpose of allewing citizens to protect 
their foreign interests, to deny it the privilege of registration^/ 
when the sane is neeessary to protect its foreign business, "will x>e 
in exact opposition to the 1882 Traio-Mark Act," 

This ease now 'oef ore me presents the same question con- 
sidered w the Commissioner- in ex parte Galrt Manufacturing Co,, 
85 0. G, 1907, as to v/hether or not a surname was a lawful trade- 
EarK prior to the year 1881a It was held that it was not a lav/ful 
trade-mark, citing AmosKeag Manufacturing Co, Va- Spear et a<l.a, 2 
Sandf,, 599; Brown Chemical Co, v, Meyer, 55 0, G,j, 387, in the 
Dase last cited, the Supreme Court of the United states speaking 
through Mr, justice Brown said: 



"it is hardly necessary to say that an ordinary surname 
cannot \ie appropriated as a trade-nark Tiy any one person as 
against others of the same name who are using it for a legiti- 
mate purpose, ,althou~h easiss aii?e ' JlQt want ing of injunction is- 

to restrain the use even of one's own name vitxere a fraud 

anotner is Banifea.t^ly jLnt ended, " 

That a surname la not' a"~i awful trade-mark, that it cannot 
36 the exclusive property of eaNy one person as against all other 



sued 
upon 



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To .lOEcasojjn an J fU Jx Jrnj ,J-nsoiIqqr orfJ Y<y be:mmbB v:l ii 






arlJ 



J*ijjC! .0 niwf)E 



ax 



"J'li/e" baov/ 

2'xoi";io Xixl oJ- Y-C'teaaori JcrlJ- Qslnsoaai won ,, 

liii n± ■ ici^cr±lr\ . . : moil awrfJ nxBc^c-c ii'.fm 

*i + 



aXoiivv uiij iuoilsx/'-'-i.. 

»aeofie Jrtjjfl' lo'^. 

I.t/3wr.i eJl a: , c 

' Jt:jjcI' aaieri'ii/a i^;n'd-'' Jerfj- f)35naJ'a(^o aio'^aiaffo rl Jl Jbofi 
norfw ,e:'i03ac' e,Bii priB ^mollel eSl '\o bnnlq arfj- avoo^B nei 

" . '(i£-ra '^iBiiLcn!:> nfi ,2Porfe oJ ;_ 

nxjEJcyo od" "nxj{c.{9 8"sc JI xo" nsylsB ?rn ax ,>[aBii-abfli J e e£ 

jni3iIaqqG en' J- Ydw anosBai en'T " .nrx J-bi Jax-^ai yo^ Xir 

baJT.j-a t>iB jfiF.ca-afcBi J n co "J^ju?^" biow arf:^ 1o nox Jbi JsiscJ 

:swoIIo1 ef 



'rT 



en 

of 

Jul 

the 
par 

the 
Jun 
was 

whi 



-L J j-i,'J"-^0 il^^Xcj ^-. 



jaoui ni 



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JX 



,nox J'fii Jex'ei ,yo^ baaxraia 'e^ onB ,no 
-'IS© Lil JiiLx'x eJx iiQsaB oi laqoiq Jx ; 



If noi .txSnoo aaB 8 Jf;"3li 



^e-QLiSiiuoo alqxoriliq oiii lo Ha J nx J-jyc?" ,aax-ionx/oo nsia'xoT: nl^J. 

"..bejilupsi J-ail'^- -.x ndxJ-B'iJ-slsa'i aaiori 

-ax^o'i 'ixTO as rfsufflseni -^Bri J- te.ol la q-:. Ycr fcaS'^u 6X J-i 

JoaJoiq oi enasxJxo sniYTDllB lo asoqijoq \,iav ariJ- lol eie swbI nox 
,noxd-BiJ-ex7jai lo aj^alivXiq ar'J >ti Yriafc oJ ^n&ao'ie Sni nsxaiol i 
©cf IIItt" ,a39nJ:a;jc/" n::;loiol sil JoaJoiq oi X'lBBiiSs&n sx'anBE an'J 

".J-oA XtteM-otB^cT SF8I ettJ-.pJ noiJiaoqqc io&x 



Julj 



,.oO anxiu^BlnncM ;;IbO a Jifig xa ni ■•^anoxsciaiEoO ecii \cr'b9i 

-cLe^j- Ix/l\7.r,i B ciBw affl.Bniua g Joa -lo lan'^tarfw oJ an^VO^I ,v . 

lijlrci^I B Sen SBW it inrii blsri hbv H .1881 iBaY an' J' oi loxiq 

S ^,lB Ja iBaqS 'eV ,oO sniiuJ-OBlx/fiBM ^BajfaoiEA ^niJir ^jriBon-a 

3i.i ni ,V8f: ,,0 .0 -26 jia^sM .v ^oD iBolm.dO mvoiST ;Q9S f.l 

■jnxasoqa aeJsJ'c^ BaJ-xntr arfJ Iv JiirdO amaiqi/?; arlJ jbacTlo JscI 

:: i rmoi3 eoliauZ ,iM ririU 

aaiBrnt/a xiRnitio nc JGriJ- t^K . .t \,'a,n;>- aoan xlbis^rl'si il" 

an noaieq ano ynB vcy jTiBm-atiB^j- - Jbao*Bxiqoi'qq3 ac/ JfonoBo 

-Lil'gel 6 lol Jl Sfiiau aie Offw a>Tir.n auij^t; ariJ lociariJo JrhIbsb 

-ai nolJonuf;ni lo saiJiiBw Jon yi?. eaaBo ri;;i;cr:j/B ,s-c:oqix;q aJea 

Lxjoi'i 8 e'xefft/ araBn n^'o s'erio' lo nava aejj ur;o nlfyiicoi oi bssjc. 

".IiaJbnaJnx Y-CJcali^mj ^ lanJoOB noqjj 



naif Jo lie 



Jenxe: c ;:b noEieq ario ^jtlse lo xiieqo-iqe'/i&uloxsar. 




rsons o-f" that name,'^onGlu3ive,- This iss the law now, and was Jlo< 

e law prior to March ^, 18S1, There is a difference ^:)etween 
technical trede-tark and the ri^ht one has tc the use of a cor- 
aln narae, on th^ j:3o-:ind Df Unfair e :)np :3t It l 3n, where fraud is 
Jhown to exist on the part of the infr ..n,~6r, in order that n 

arty can have property in a trade-marK, h.v must have the sxclusive, 
^^bdisplted ri^ht to the use of thfet tnarK as against the vfnole 
world, v;hether fraud Is shown to exist T>y the infringer, or not, 

in the cases vhere the name of a pc.rty has "oeen used x>y 
another party though of th .; sawe name on the saaie class of £:oods, 
it is settled that fraud must tie showi in order to warrant protec- 
tion on the ground of "unfair eompot it ien in trader". 

As is Y/ell stated "oy Hopkins, in the first sentence of 
paragraph 15, ph^e ■■'^71 ■ Iti ftls';'book on The Law *f unfair Trade: 

"it can hardly "oe dout)t ed that at its inception the doc- 
trine of unfair (^-oapetion was devised to protect tno puX)lic, 
rather thaii't'a-reGojpUze cny vested ri^ht in the complainant ,■ 

And further J :.n page 39, -it «j.s. stated r 

"it fs 'tl$ry clear that eqiUty intervenes in.the .ixrotection 
froEQ fraud of \50th the complainant rAiose xjusiness ; ia,<3r, saay ,X)e 
injured vy the unfair and fraudulent coinpetion, and the pux)- 
lic who are the consumers of. his merchandisSo " (Lav/r^nc: 
Mf^r, Cc. V, Tsnn.ss Mfg, Co,, I38 U. S. 537, 

A technical trade-Mfl!: is essentially a vested ri3;ht , A 
proper name is not a technical trade-sark for the very reason that 
in the nature of things it never was and never can 'oe a vested 
ri~ht« It ^Delongs equally to all persons xiearing that name. This 
ioctrine was as well settled prior to 1881 as it., ig ,at;^th§^ pj^es^ent timso 

The appellant cites the> decision of the united states 
Supreme Caurt in Singer Manufacturing COo-' Vi June Manufa^uring 
Co., 163, U. S., 169, and urges that in this decision th-D Coart has 
rocoi^nised the word or name "Singer* as a lawful trade-mark, and 
Lhat said dec is .on ohhaild xte used exclusively to determine the 
point at issue. 

I do not find any thing in said decision that warrants 
I, he conclusion that the "Supreme Court acknowledges that a naee 

Bay ^oe ^. trade-mark," 

After discu'3Ging theright of parties ta the use of their 
own name, the following statement is made: 

"This fact is fully recognized x>j the well settled doc- 
trine y/nlch holds that although 'every. one has the aX)3olute 




-iO/i 



i 



. .xvSec^ &cnc'J^'''~t^':y o'x eierrT .1381 t^ r'.oir]' oJ apiiq, vȣi 

-li c r "ye Qsr ; eno ^ri^Jti Brf:^'' bfi£ ii j.^eolnriosi 

ai buBi'i 8'idi-iw ,nr . Ji .te, rrc o li/lnr Ic t. i r:J- nc ,errrn nl 

<•• j/3r;j- riefcio «! .la^n.-ilai erf J Ttocfin,. .. .j no iv.l2.Q0i ano 

,6via/jIox3 ©rfJ evBff ie.sjm i-ci fTlir.m-abBii s ni xii&qosiq evstl nbo xir 

elortff ecii isniQ-^B sf. Jlism iari&'Jc . ;;J Jri'LX'i bQiisq&ib 

, jon 10 -iariiiilnx arfj \:<r j-sixe oJ n..w;;: cX bjjj:;'il„i^rtJ-8rfe jMi 

'ic/ besif ns^err z&cl \i^c,q (^ '^e 9rn.p.n enj- aiarfe- panr^o arfj- ni 

soie'iq ifiGi'iBVT OJ lobio nx nv.'Ofia aC Jr.xrza L/jcil JnriJ Ea-t J'-iap. ,,?i 
".ef-.^^iJ- nx noi J-i +,.r,-:;io'^. '!i-''n;j" ^o .bnxro'T- .-rt no jftb 

"lo sone^naR Jaix'i erfvf nx ,sni3fqoH ^(y /:)sJ;3J-s I'lavf ai 8A 

:dbBii ilislnL' " -.'SJ an'T no :{ooc' r.xrf rrl ,'?" . ■' q ,51 rlq£i3r:i 



^® -90b erii noiJqaonx ai-l i^B iari^ badcfsJdl ^Ibizci nxio J-i" 

P® joxicr.yq f-rlJ .toaJO'iq o-.t J6>at;'lvob a&a noi Jaqffloo. ilr'inj' .i ^ 

, JneniBlqiHOCi an J nl if&yii b&J-sav ^n asin^^ooai oi rui^.J '.ar.jjoi 
upi 

rbaJpoP p.^ J-x ,9,9 a3Bq nc ^ledi^ffl bak 
en 

of noxjo&Jo'iq anJ ix. soaovie. Jnx YJxi;p3 vfj-..-;iJ i-otiXo Xiay. kx ,4l". 

OCT "„rfa ic .iJi saQnlesjcfoeom JrfBniBlqmoo ori.t rlJoC" lo' Birfsi^ csoi'i 
Ju] -oTjq 0di briB ,nol cfeqsioo JnoIjjbxj.G'n fexiii? .axQlajj erfj yc Jbaijj(;nx 

tht c»n£iv/j5j) ".aEicrLBflo'iaffl siri "^o aiaKxrenoo arf J a'ifs oriw oxl 

th« A , .tri:*,!'-! foaJ"artv e Y-f-Cfii ^rrasaa c.l ■- - r'±i 1 clnrfsa-J A 

Jur. jBffJ noaee-a xiav- 9fl<t^ rtoT: >hcf3fa-ajb6i j LBSInnss^t s Jon sJt amen Ttaqo 

was feaJsav « ac^ n.06 ^i'eVan fcrriR ebw •xavon J-i ssnxrfJ' Ic afJ^rJ-an .orlJ' 

whi EiriT .©inisn iBfii Tj^iLinecf snosieq II:*: oJ yllsupe s^nolecr JI . .Jfis 

.eoiixJ J-naaaiq' arlJ J'b al Jx as IQ?I oi lox'iq .buIJ-J-ee Haw ?,q a.ew anxiJ-o 

saJBJf: i)tiJxiii; ;iiJ 'kt' aoibifjesi' c'i.i 89J"xo toBlIaqqB etti'l! 

'-,nii!.' iv r,'\urmU QnvZ ."V'^ct T.nlirrJor'iunr/' lennlc nx ^ar;cO qcoi^ 
Jul; 8«rf JnxjcO c-ri^J noxcv.oofo _, .. lJ -^ : J c. • -ir' ,oM , „r ,u ,'I^ 

£inj? ,ai/:cD-afcRiJ- Ijjlwfel b t:ft "ie:;nxa" emsn lo Mov/ arlJ ^az^In^jOo 
v'i snimieisr oi 'vlavisx/Ioxo fcaaii :" ■ lucTrfc no. al09l> Ilsa Jc 

,a;;r;;x i£ iai 

gjn-;iij3v/ Jerli nol.^xoaft blna nl snxrlJ- y^ib Jjnxl ion ot I 

9«j8n ..? ipiU car;baIwon>fo£ J-ii;oO ^oeiqrjS" ariJ- ;tKrf^ noxafrlonco .. 

" .:i'ii\z-tbt^ii T acr \ 
liafi^ "bt' asw efi:^ «J ealiiK-; "io i['^z^iQCli 3aXrt.0O£lft laJlA 

zebBOi si J-fie>:.:c-^/3Jta SJ'^iTf^oIIo'i ariJ" ^acBcn n 

~t>ob boliiee Haw &rii io' fiasirtsooai YlIi;/> 21 toP'J aid!'" 
octxjIoEcrc eiiJ ajarl ano y^^vs ' risuori :Mij jBrij ablori rioiriw sniiJ 




""y. . J. I'JWBT - 



.vf?inr:^T^i^> 



1^' 



4. 

right to use his own name honestly in his own "business, even 
though he may theret>y incidentally interfere with and injure 
the TDUsiness of another having the same name. in such case 
the inconvenience or loss to v^ich those having a common right 
are su"bjected is damnua atisque injuria . But although he may 
thus use his naoie, he cannot resort to any artifice or do any 
act calculated to mislead the punolic as to the identity of the 
"business firm or estaAolishment , or of the article produced "by 
then, and thus produce injury to the other "beyond that waich 
results froM the similarity of name!" 

in the case of ex parte Buffalo Pitta, 89 0. Go, 2069t ^eg- 
•t rat ion was asKed for the same reasons urged "by the appellant in 
his case. The question was fully discussed at that time "by the 
ommissioner, and I fully agree with his conclusion,- 

If the appellant has a right to a protection under the law 
f "unfair competition" in its u^e of the ?/ord "Burt", said right 
oes not make a technical trade-mark of the word "Burt", in order 
hat the word "Burt" may constitute a lawful or technical trade-mark, 
t must \>e evident that the word "Burt" was always from the very 
eginning, the exclusive and undisputed property of the appellant or 
ts predecessors. 

That this is not so, is self evident,' in the very nature 
f things, inasmuch as "Burt" is an acknowledged surname, it is not 
apa>ole of x>eing the exclusive property of X)ut one person Xiearlng 
hat name. 



The dsltoma that the appellant is now in is cue to the 
nfortunate selection "by it of the surname as a trade-mark, when its 
usiness was founded. The name "Burt" was not in itself a vested 



ight in Edwin C, Burt as 



against all other Burts, "when he first 



dopted it as a trade-mark« This \)eing true, the name "Burt" does 
ot now >Decoffie a lawful and technical trade-mark x^ecause of any right 
hat Burt or his sueeessors may have or the public may have as 
gainst the fraddulent use of the name "by others in connection with 
he making and sale of the same class of goods, which have become 
o well known in connection with appellant's name, l am convinced 
hat neither the statutes nor the decisions interpreting the same 
arrant the registration of an acknowledged surname as a trade- 
ark, I appreciate the importance of, and the necessity for, the 
egistration of certain trade-names as trade-marks. This has 
risen of late years in connection with the great increase of trade 
etween the citizens of this country and those of foreign countries, 

inasmuch as the present law does not provide for, or per- 
it of, such a registration aa is asked for in this case, relief 
an only X)e had x>y means of a revision of the act authorizing the 
egistration of trade-marks » 

The decision of the examiner is affirmed, 
uly il, 1901, (Signed) e, B. Moore, 

Act in.: Commissioner* 



-iiO A 



aave .aaaniajjcf ano alri ni xliueaori eaiBCi who alrf aau o^ JxiS-ti 
siiff-ni hoc dJiyt eiaJieicii xllBmsblaai YcTsiariJ yjsm an fi3i;(6rf.J 

eaao riotrs ni .0 r.r.E 3r(»t snivfirl lariJona lo ar---- -',' 

JiiSli nomoioo e s^Ivf,. ^ J rioirfw oJ ar.ol 10 aonalxiu . .0 

1^60 8:1 [i^tJOciilB iu3 . cXiurfli aijp «cf jb auj^naeb a J: beJoa^crue ©ib 

YTLfi ofc 10 QoLll^a \a& oi Jtiosai ^onneo sti ,aauBn axri asu surlJ 

srii "10 xHinebi arii oi as oilifuq ecii bfialsix oJ bai&luolBo <toB 

Ycr baoufoo^iq aioiJ^o ecii Jo 10 , JnaarfKilcye Jaa 10 anil saanxKucr 

nolnw ^BriJ £>noY9Q^ leciio ariJ oJ Yiutni eouboiq Kistii Jbnjs ^fnariJ 

"laawn lo xJJtit/Bllala ariJ «oil a^Iuaan 

-oS'i ,Pc^OS ,,: .0 Q8 t9iii'J olsllsjQ. aJiaq xa lo aaeo arfi ni 

ni JruIIeqqjs a^cf J' YcT basnx; anoasai anea arii ttoi beXaa efew nolJ'fii^al 
©riJ- \(r &ali iRcii iB banBUoeib xllin. ajBw cialiBeup arlT .asjso alriJ 
v.aolaJLrIonoo sici ri^lw aettSB -^Ixn I Lns ,ianola£laB)BoO 
wal arl^ labnu noi JoaJoiq « o^ ^txloii b asri .tnjBlIaqqB arU 11 

Jrisin blBs ," rxuQ* blow ariJ lo slsj aJL ni "noi Ji .Jaq«oa liBlnu" lo 

labio ni ."J^i/G" blow a;iJ lo Xruea-abei ^ Isolxiftoa.f i3 asfsai ^on aeob 

,Xis£B-9bBi J^ l6oJ:nrioo<J 10 Xulwal a eiusiisnoo Y«ai ''JT:jufr'' biow eciS iacii 

Y13V aff.r 8B01I »ismlB sbw "^uS" biow arlJ iBrii toabivs ac Jajuxn ii 

jriflliaqqfi erfi lo Y«^i9qoaq baJi/qalbnjj bas avlax/Ioxa arlJ jS^^lnrLtsac^ 

.aioesaoaba^q *3i 

eiuiea ^lav arlJ ni .Jnoblve llaa ■! ,o« ion. si alriJ -fsrlT 

Jon ei Ji ,ai2srrajj2 bas^aXwonjioB n« si "J^jjS" «b rioutnaBni: ,82nlf{;f lo 
snlifiao^ noaieq ano Jua lo \;ii:aqoiq svieulox^ ecii anlaa lo alonsqBo 

.aTiBfi iBrfj 



art J oi eut <ii ni won si JnjsIIaqqis arfJ .ffirfi saisiAIib aril 
ait n&ffw ,Sru3!a-eb«i J /3 sb Qiimrvius. artJ lo Ji ^o^noiJoalae a^Bnu^olnxi 
baJaav c llsaJi ni ion lbv " iisjS" aasn arfT .bsbni/ol sbw aeanlai/o^l 
ia-Jll erf nsrfw fSi^uS. lariJo IIb Janiasj^ au ,njjS cO niwba ni icl-gli 
aeob " i^iM" aasn ariJ ,efni gnioa airiT .XiBci-abn^i b sb il b&iqoba 
Jrfsli \cnB lo ea.fXBoaa ^iBca-abBi j- iBoinriobJ bnB Xulwfil r> amooac won Jon 
as ovBi'i \;«£fl »iIoruq eriJ 'lo avBri ^£fia a^ofisaoon siri 10 Jni/a Jsrf J 
flJiw noiJ-oannoo ni aiarlJo Y<r aiBBn axlJ lo aai; Jnali/irxjaal ariJ JaniB;;:* 
aaooaa avari rloiffcr ,EivO0s lo aaslo afflBe ocii lo alea bnB :^al}iBsa eclii 
feaonivnoo mg i .aoiBn a'JnBlXaqqr, iiJiw noiJoannoo ni nwonX XXaw oa 
easR arfJ aniJaiqioJni anoiisisab orfJ ion SiQiuisis &£ii nariJian iacii 
^QfoBii a as aiaBai03 ba;ibaXwon?(OB nc lo aoiiRn.i&i-je'i. edi JnBiicw 
ecii ,iol xiiasiaoQii Q[ii ban ,lo aonBJioqiEi arii aJsioaiqqB I ►X'ibm 
Bflri aiflT »M^i&!M-3bBii as aaoBn-abfliJ niB>ieo lo noi Jbi Jsi^sai 
abiiii lo aaaaioni iaoi-^ arlj rlJiw noi Joannoo a± ai/sa"^ aisi lo nagiiBj 
,aaiiJnuo9 n^iaiol lo aaoriJ bna xiinisoo alfii lo anasiJlo ariJ naawJec^il 
-isq 10 ,101 abivoiq Jon aaob waX Jnaaaig arlj a,a xlpumsjsni 

laiXoi ,aa«» airiJ ai 10I ba.^aa ei -ls aoiJBiJ,i3ai b xloi/e ,lo Jii 
arij 2iii.\iioflJUB Job arlj lo aoieivoi b lo ansoa \<r ban bc/ yXno xib; 

oaiisB-abBij lo noi J»i Jaisail 
iani«Bxa axlj lo noiai»ab arlT 



.baaiil'iiJ ai 
taiooM .a .3 (ban^ia) 
.loaoii^aiamoO :;,nijoA 



,XOQi ,11 \.1sj: 



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I 



May 31, 1901, 



UNITED STATES PATEOT OFFICE? 



Ex pa r te ^ E. I. Miller. 
MS. D., Vol 71, p. 375. 



Print for Ceroleum. 



Petition, 



Application for registration of print filed April 22, 1901, No. 1,524' 



Mr. E. I. Miller pro st. 



This is an appeal from the action of the examiner refusii^g 

to register a print entitled "Ceroleum. " 

This print is described as consisting of- 

"The word 'GEROLEUM* in large, heavy faced type or letters 
of any appropriate size andjistyle, with theHords, *DIRT PROOP 
FLOOR DRESSING' printed in siaall block letters acr«ss the face 
of the said word «CEROT,RW!' in a blank space or strip left in 
the center thereof, and equal In width to about one-third of 
the *idth of the said word, •n'RROT.T^rPTt . ^he said word or 
T^ords to be printed or otherwise reproduced in any one or 
different colors desired." 

The only question to decide in this case is whether or 

not this print is sufficiently artisti« to warrant its registratien 

in the Patent Office. It is clear that in all other respects the 
print sought to be registered complies with the requirements of the 

law. The fact that a coined word is added to the print, or is a 




Xo a 



2. 

part thereof, does not make it a proper subject for registration, If 
It is otherv/ise inregistrable. E x parte Blair, 70 MS.D., rsi. 

Whether or not a thing is artistic must be left to the 
judgement of the observer. In the decision of the Supreme Court 
of the United States, Higgins et al. v. Keuffel et al., 55 O.G,, 
1139, it is laid *ovm that a print is not registrable if it consists 
merely of words printed in an ordinary and well, known way, and 
which has no value in itself as an intellectual production. Does it 
amount to an artistic creation to superpose the words, as the peti- 
tioner has doae? 

This office will take judicial notic* of the fact that 
"broken type is in coramon use ajnong printers, and that superposed 
words, such as petitioner has used, are common in the printing art. 
It follows then that to so arrange the type as to print superposed 
words only involves the expected skill of the typesetter. (Bx parte 
Mahn, 82 0. G. , 1210.) 

For these reasons it must be held that the petitioner has 
not presented a print which involves intellectual creation, suxd 
therefore presents such artistic merit as to warrant its registra- 
tion under section 3 of the Copyright Laws. 

The action of the examiner is affirmed. 

(Signed) E. R. Moore, 
July 12, 1901. Acting Commissioner. 



^8 W 



■if 



' V-TJBT^ 



UNITED STATES PATENT OFFICE. 



Ex parte Martin K. Taylor. 



MS.D. Vol. 71, Page 480. 



Trade-MarX. 



Application filed May SI, 1901; No. 63,440, 



On appeal from the action of the examiner in refusing to 

register the words "UNION BUTTS" as a trade-marK for smoXing and 

chewing tobacco, upon the ground that the words were descriptive 

of the goods, indicating that they were either union made butts 

or butts made in union, the word "Butt" being coinmonly used to 

indicate the butt or stump end of the tobacco plant or the butt or 

v;aste portion of a cigar,- the Commissioner held as follows: 

"The decision of the examiner of trade-marKs is affirmed, 
for the reasons stated by him," 

(Signed) F. I. Allen, 

OoBcnissioner. 



18 £ 



September 16, 1901, 



.90 



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C7X 



Sept. 20, 1901. 

imiTED STATES PATEl^T OFFICE. 



Ex parte PoT/er & Kelsay. 



MS.D. Vol. 7??, Page 5, 



Trade-Mark for Buttons. 



Appeal. 



Application filed June 11, 1901; No. 6S,567. 
Messrs. Power & Kelsay pro se . 



This in an appeal fron the action of the examiner refusing to 
register the word "WINDSOR" and the representation of a star as a 
trade-mark for buttons. 

It is well settled that "a mark which is common property is 
not made the property of any one individiial hy associatiiig with it 
certain arbitrary symbols v/hich in themselves may be registrable." 
Ex parte The Columbia Incandescent Lamp Company, 96 O.G., 1036. 

The examiner has cited facts which clearly sho?/ that the word 
"Windsor" has a geographical meaning, greater than any other mean- 
ing v.'hich can be ascribed to it. Its registration as a trade-mark 
was properly refused. Ex parte Little & Company, 85 O.G., 1221; 
ex parte The United States Playing Card Company, 96 O.G., 1855. 

The decision of the examiner of trade-marks is affirmed. 

(Signed) E. E. Iloore, 

Assistant Commissioner. 
September 23, 1901. 



192 




.-fV-t' ■,■■■-■■■:■•!:? jAaSte'^^' 



^^^v -—.'^ ...r^^^^r- 



iiiwii Mii iJ i 



■ t. 24, 1901. 



UNITED STATES PATENT OFFICE. 



Ex parte Minnie TharAldson. 
3t ; n.nti 

MS. J). , Vel. 72, Paf^e 13. 



rittt- 
Hair Restorative. 



Appeal;l«arly s'^oa-s 



Application file* August. 3 j 19D1, No. l&M. 



» 



Miss Minnie Thataldson pro se, 



This is an appeal frem the action of the examiner ob- 
jecting to the copies of the print filed with the application for 
registration, on the groun* that the said copies appear on their 
face to be rough drafts of t}ie print, and are not "copies of the 
print or label" use* by the appellant, as required by the law. 

This appeal has been taken after a single action by 
the examiner. It is therefore premature. The rules of prac- 
tice require that the question at issue shall have been twice 
acted upon by the examiner before an appeal can be taken from said 
action. This practice is foimded upon reason. It is necessary 
in order that the question at issue nay be well defined. 

The exajiiiner concludes liis statement with the fcllowJi 
ing: 

"The only question to be determined is whether the copies 
furnished are merily a rough draft of the print or are, in 
fact, the print itself. The law an* the rules *o not pro- 
vide for rough drafts, but specifically state that there 
must be filed in the Patent Office 'five copies of the print 
or label*, which is, as above state*, a modif ideation of the ft 



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aoi-rc^o TwaiA? r^tats asTiiru 

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.iBsqqA 



,M8I ,o?r ,IOeC «r, lairauA Jibuti noxiBt>i.Zqqii 



.63 QTq no8&Qi'*firfT QlnaiU a«x?' 



Tol n«i:;Js?JtCqqB stii rtMlw fcslit ;tnnq ©nfcr lo 8»xqo& ©rl;t o;J 3iii;Jc9t 

ilBdi no TBsqqB «9iqoc blisa 9di iBiii fcrnxona 9K;f xto ,nex;fB') isiai-s 

Brii lo 8»iqo5" *oa sifl bns ,;Iiilnq s/f^t lo a;Jt/sil) ri'^uoi ad «^ o&bI 

.wjsl «f{* ijd *d-ilup«T as ,Jn«.CX6qq.^ •rfJ t^ ^98" "larfiil to ialiq 

vrf nei.tr^B »C;5iil8 B -inits n9:ABi aBdfi ejjH iBftqqB airiT 

-sfi'tq lo a&I;n »r{T . sTjfctBnrdTq •Tola'isrfcf al :JI .nanlnisxe •/<? 

©siwi nao-f r»-/j?f( Ilsr/a 9«a8J: its noj:;t8©up »K;t indi ^tiupai 9zli 

ftlsa MO-it it9.?{B :Ba XaeqqB /is dio'ift'f lanlnusxa 9r{J xd noqir fo«JoB 

v-ifiS20t9ii ai dl .noaG9T noqu fesftnwo'! ai otictcBiq alrfT .0oi::ttB 

,b6al'^9b II«w ©rf xspi 9uaai; in nol^RQup 9n'J- jBrf.t leino ai 



iiwotfo'r ar'tr fllv; :fn9ra9:t6t8 std aefti'Ir^aos lanimBx© adT 



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asiqoi s-'i-t narusaw ao. jiynxmnsiefl 9cf ai rtftx^taaup v.Cno 9.'iT" 

ni ,aiB TO ^niiq &<ii to ilsth rfi-juoi b X-C*"fSfJ •''-'^ fcarfaimi/l 

-oiq ;toii ob aiilui 9di fuiti wbI arfT ,ll98^1 :tnliq srfcf ,.tt.B? 

319^;^ jBrf:f 9rfj*.ta yf t^i-tliisaqs iud ^zitR'\b d-^u^t nol a.felv 

jfixiq ari.t to aeJtqos 9vlJ* aoittO ;Jn»^B*x erfrf nl iftllt 9d :tajjsi 

srf.t to rtoi;?ns'xtx.bQr!i s ,b9iB:ta avo-iB as ,ex rfsiriw ^'ladB 



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opyriffht Act, which provides for two copies of such print, 
"Therefore, in view of the fact that the case has not 
been fully considered by the examiner in the first instance, 
inasmuch as he has net twice acted on the amendment filed 
August 23d last; and further, in view of the fact that ther« 
are certain foriaal obiectiens te the application itself which 
have not been raised, inasmuch as the substitute applica- 
tion of the /:3d ultimo was overlooked when the office letter 
of the 27th ultimo was written, said letter being directed 
solely to the substitute copies filed, - it is submitted 
that the appeal should be dismissed and the case remanded 
to the examiner for further action." 

The record of this case clearly shows that these state- 
ments are supported by the facts, 

Uhiether the copies on file are true copies of the print 
used or whether they are merely rouj^h drafts, is still aji open ques- 
tion. All preliminary questions shoxild be settled before an ap- 
peal is taken. There has been no attempt on the part of the ap- 
plicant to settle this question of fact raised by the examiner. 

This a,)peal is dismissed, and the case is remanded t© the 
examiner for further action, 

(Signed) E. B. Moore, 

Acting Commissioner, 

Septem.ber 25, 1901, 





p 



1901. 



UNITED STATES PATEITT OFFICE. 



o o 

Ex parte Sylvester James Betts, 



MS.D. Vol. 72, Page S4. 



Trade-Mark for Medicine. 



Appe?l. 



Application filed March 28 » 1901; No. 63,002, 



Mr. Julian G. Dowell for applicant. 



This is an appeal from the action of the Examiner of Trade- 
marks refusing to register as a trade-marX for medicinal remedies 
for headache and neuralgia, "the pictorial representation of the 
bust, including the arms, of a v/oraan having a bandage about the 
head and one hand raised to the forehead, substantially as herein- 
before described and shown. " 

On Hay 28, 1896, a marl', for the same class of goods was regis- 
tered by George S, Parquhar, the essential feature of \7hich con- 
sists in the pictorial representation of the bust or upper portion 
of a female with the countenance indicative of pain, and the hand 
pressed against the forehead. The accompanying fac-simile shov/s a 
bandage wrapped around the forehead and the right hand pressed 
against the same. 

The ground upon which registration of the trade-mark is re- 
fused is that it so closely resembles the registered mark "as to 
be likely to cause confusion or mistake in the mind of the public, 
or to deceive purchasers." 

The action of the Examiner of Trade-Islarks is believed to be 
correct, for while there are slight differences in some particu- 
lars between the tv;o marks, yet these are not sufficient to warrant 
this office in registering the second mark. See the decision in 
ex parte Lefebvre, 9G O.G., 841, and the cases therein cited. 

The decision of the Examiner of Trade-LIarks is affirrned. 

(Figned) E. B. Moore, 
September 26, 1901, Assistant Commissioner. 



19. 




W'.-" ' '^^?T^''^ ~- ■ 



19*? 



UNITED STATES PATENT OFFICE . 



Ex parte The Philadelphia Lawn Mower Go. 



MS.D. Vol. 72, Page 51. 



Trade-Mark, 



Application filed March 14, 1901; No, 6P.,89B, 



On appeal frora the action of the examiner in refusing to 
register the word "DREXEL" as a trade-marX for lavm mowers, for 
the reason that it is a surname and also a geographical v/ord, 
the Commissioner held as follows: 

"The action of the Examiner of Trade-Marks is clearly correct, 
and his decision is therefore affirmed. See ex parte Edwin C 
Burt Co., 96 O.G., 14S0." 

(Signed) E. B. Moore, 

Acting Commissioner. 



October 5, 1901, 



98 



i 



TTNITED STATES PATENT OFFICE. 



Ex parte The Philadelphia Lawn Mower Go, 



MS.D. Vol. 7r, Page 51. 



Trade-Mark, 



Application filed March 14, 1901; No. 62,897. 



On appeal from the action of the examiner in refusing to 
register the word "DETOY" as a trade-mark for lawn mowers, for the 
reason that it is a surname and also a geographical word, the 
Commissioner held as follows: 

"The action of the Examiner of Trade-Marks is clearly correct 
and his decision is therefore affirmed. See ex parte Edwin C 
Burt Co., 96 O.G., i4S0.» ' 



(Signed) E. B. Moore, 

Acting Commissioner, 



October 5, 1901, 



199 





1 



'Ober s, 1901. 



f/^ 



.^ 





imiTm STATES PATENT ^^i^icE 




^l2.J2^^te John 7-!. Birr 



■-^-Xhead. 



'"•"• ''°-^-. !?♦ Page nr. 



Trade-Ma.k for Non-intcxi.atin^= 



' I5ririk8, 



Appeatl . 



Application filed May if 



^' i90l; No. 68,S76. 



^^r. J?. G. Si 



SgerR for Birkhead. 



As oorcraonlv u-n-^f^-^^* V <3escri-ptive anri ^^« j. • *'-^^'^®- 

the v;ord "PUnch^- referft^f ""' "" ^^^^^"^^ i" ^he ^ff ^• 
ingredients «r,^ J^^^ers to an alcoholic ff-PT>.v dictionaries, 

™oh, mL' p^^,,^^^^ ^^'^^^ily from one o? t,^„'°"'^"*^^^^ °-^ ^arioua 
intepppetation Of T '° ^°^*^- ^^"'^ ordlna'r.^.' ^ Punch, brandy 
punch, an alcoh^f • ^ ''°'"^^ "PJ^sm PIjn?-J L^'^ "^°'^t natural 

pepsin. ""Ap'r-eant h""'"^' '" ^^^^^^^ onetf ^.f ,"f^^^-?' ^-^^ 'ue a 
this name is P,^^f.* ^°^'«^«r, states that t hi f ^''Sredients is 

Jheoe words +>i^t-o-- 

— "^-^-^ and Larrabee, so 




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ar'rai'vrJ 



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2) V- •■*r*:*vi 



MS.D., 250, the v.'ords fairly indicate to one's mind that in the 
manufacture of this punch pepsin was depended upon as an important 
ingredient. 

The facts in this case are very similar to those in ex parte 
Bowe, 60 I.iS.D., 1G8, in which the words "Cherry Cocktail" werere- 
fused registration for non-alcoholic beverages, as being .deceptive, 
the word "Cocktail" denoting a drink, the principal ingredient of 
v/hich v/as alcoholic liquor and the word "Cherry" being descriptive. 
In the present case the word "Pepsin" is descriptive and the word 
"Punch" deceptive. 

The decision of the Examiner of Trade-Harks is affirmed. 



(Signed) E. B. Moore, 

Acting Commissioner, 



October 7, 1901. 



'-^ >.ji^: i»i<4i.»tak> 



kl^ 



c^n 




October 1, 1901, 

UNITED STATPJS PATENT OFFICE, 




y.x parte The Crescert Ilaimfacturing Company, 



MS.D. Vol. 7S, Page 67. 



Tr^de-MarX for Sweat Pads for Harness Collars. 

-.Gtlr;.- 



\ 

Appeal, 



Application filbd December 7, 1900; No. 6R,f345. 



Messrs. Rhesa G, DuBois and Company for applicant. 



This is an appeal from the action of the Exariiner of Trade- 
Marks refusing/ toj register the representation of a harness pad and 
the hyphenated v;ofd "NO-RIP", as a +rade-mark for sweat pads. 

The examiner refuses to register the marK for the reason that 
the harness pad is a mere representation of the goods to which the 
mark is applied, and that the hyphenated word "NO-RIP" is descript- 
ive and indicative of a quality or characteristic of the goods. 

It is v/ell settled that the form of an article cannot be the 
subject of a trade-mark. .See Adams v. Heisel, SI Fed, Rep., 279; 
Llerriam v. Famous Shoe Co., 47 Fed. Rep., 411. If there is any- 
thing in tlie form of collar sweat pads v/hich distinguishes them 
from other pads of the same kind, it roight be a subject for a de- 
sign patent, but not for a trade-mark. 

As to the word "NO-RiP", it is clearly descriptive and means 
that the sweat pad will not rip. It is composed of the two wo-"ds 
NO and RIP and the fact that these two v/ords are hyphenated does 
not overcome the objection that they are descriptive. See the de- 
cision in ex parte Pittsburgh Piunp Co., 84 O.G. , fi09. 

That such descriptive v/ords should not be registered is well 
settled both in the courts atid in the office. See ex parte Evans 
and Shepard, 96 O.G., 425. 

In the present case the words "NO-RIP" clearly indicate that 
the sweat pad is sev;ed in such a way that it will not rip; that is, 
they indicate a quality of the articles. This case is therefore 



' v./ 1^ 



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, aTATS r'^rrj'^^ 



:iLiu-ic^'i.SJi'u- 



■aaoiU EJJ; 



,va 83«<f ,sv .xo' . 



y.TBLloO aa9ft1i5r. 



ifoB'i J-jsewS To't X^bM-oJ 



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..irt5>of> 



.coi:J"i;oxXqqA 



•ilqq.r 



jfT/^cjirtoO fcrt,*: 



•RReM 



-eloB 



^"•""ow or,' > 



JlXow ax 



■^01 u^i-:./ - - 
...^liqXii ant 
xo QriT 

:,.._ bap .-).■ - 

. . - ' ' 8A 

... srit tf?r{* 

qiH fcrti? OJ 

niooiovo tcr 

Jc.;i cliiociij. aiJ-rco'.T evx+.ixio«fif- rfoxra JFrfT 

.•::->■, ... --{S fcr- 



^OXtOB o 

,-- --'"•••'_ei>fii,+ B ajs ," ..J...... 

ooJ"Bn:6r{qyrI arfcT ' 
anefcA 

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fpfjppj^:: ■ r^-'^m^ "-.-.^^r.,. ■■^. 



to be distinguished from one in which the v;ords are not descript- 
ive of the composition or quality of the article, tiiough they do 
suggest some remote result which may be brought about by its use. 
See gx parte Peek, 96 O.G., 4^15. 

The decision of the Examiner of Trade-MarKs is affirmed. 



(Signed) E, B. Moore, 

Acting Commissioner, 
October 8, 1001, 



»/ 




Ostober 3, 1901. United States Patent Office. 



^vuy 



Ex parte Georce B. M, Seager, 
~MS. D., Vol 72, p. 59, 



Trnde-Ifark for Medicinal Preparation^ 



Appeal, 



Application filed March 16, 1901, No. 62,928, 



Mr. E. G, Sigcers for applicant, 



This is an appeal from tlie action of the Exarainr of Trad* 

Marks refusing to register as a trade-mark for a preparatin either 

in liquid or solid forn used as a remedy for certain nameddiseases, 

a mark whi«h is set up in the statement of essential featues as 

follows; 

"the arbitrary word-symbol 'KAS-K-RILLA' , with te elonga 
ed angularly disposed limbs of the letters K, and theouter 
limb of the final letter A extending backw'ardly beneah the 
symbol in the form of a heavily s?iaded flourish whichtermin- 
ates beneath the first letter K. " 

The examiner states that registration has been refuse^ f©r 

the reason that the nark claimed is merely a mis-spelling f th« 

descriptive word "Cascarilla," which i.s the name of a plan» the | 

bark of which is used as a medicine in th.e same diseases a appli* 



20 



r. 



62,928, 2. 

cant's preparations are used for. This vi-ord is undoubtedly des- 

sriptive when applied to goods of this class. 

The question to be decided is, then, whether this desorip- 
Ive word can be made arbitrary by mis-spelling it, hyphenating its 
syllabels, and using capital letters and ornamental type. 

It is well settled that none of these characteristics is 
sufficient to change a descriptive v/ord into an arbitrary and fanci- 
ful mark. See ex paj'J:©. Henderson, 85 0. G., 453; jex parte 
Pittsburgh Pump Company, 84 0. G., 309; ex parte A, Peatherstone and 
Company, 86 0. G., 1497. 

The Examiner ©f Trade-Marks was clearly correct in his 
refusal to register the proposed mark and his decision is according- 
ly affirmed. 

(Signed) E, B, Moore, 

A«ting Commissioner. 

October 7, 1901. 



fy. ^-//^73 



fy 

October 0, IPOi. 



TINI7KD STATES PATKNT OFFICE. 



fjP 



Ex parte v;illiarn I.I. Woolwine, 



MS.D, Vol. 7S, Page 86, 



Trade-MarX .for Soaps. 



Appeal. 



Application for -'-•-':' - + -ati on filed June 11, 1001, No, 6.S,569, 



Mr. J. L. Bullock and Mr. E. P. Bunyea for applicant. 



Thif3 is an appeal from the decision of the exaini):er of trade- 
marks roAiBinp; to register as a trade-mark for soaps the pictorial 
representation of a d^key having a cover or bl alike t thereon which 
hangs ^ver_ the sides of the animal.^ 

Registration^was refused on the trade-mark of Benjamin Brooke 
& Co., llo, 26,033, February ID, 1890, vrhich consists of the word 
"Donkey:" for laundry soap. 

Under the v/ell settled doctrine of equivalents, the word 
"Donkey" is the same trade-mark as the pictorial representation of 
a donkey. Ex parte V/oaver, 10 O.G,, 1; C. D. 187C, 130; ex parte 
Taylor & Lockett, OS O.G., S5S1; ex parte Kecht & Son, 96 O.G., 1648. 

It remains then to decide v/hother applica-it's mark shov/ing a 
bridled donkey, one of the sides of the animal being covered v/ith a 
blanket, differs to such a degree from the trade-mark "Donkey" as 
not to make confusion in the minds of the public or casual pur- 
chasers. The essential characteristic of applicant's mark is a 
donkey. The particular cover v;hich envelops the sides of the don- 
key is, as stated by the examiner, "a mere incident of the mark 
and r.r^+ -=■ p-^WerA feature thereof." 'P^o ^-^idle is also a mere in- 
cidor ' . 



^m. 




w'^ 



207^ 



The tv/o marks being applied to the same class of goods are so 
similar as to cause confusion in the minds of the purchasing public 
and the examiner's action in refusing registration v/as correct. 

The decision of the examiner of trade-marks is affiiTied. 



(Signed) E. B. lioore. 

Acting Commissioner, 



October 12, 1901, 



■^'f 'r ■ '■ij^^m/^if' • ^y^^^xs^y!^ 



Oct. 10, 1901. 

UNITED STATES PATENT OFFICE. 



^\J ^^ 



Ex parte Samuel J, Williams. 
MS. P., Vo l. 72, Page 97. 
Trade-Mark for Anti-Corrosive and 
Anti-Pouling Compositions. 



Appeal. 



Application filed February 20, 1901, No. 62,741, 



Mr. Seward Davis fior applicant 



This is an appeal from the action of the Examiner refusing 
to register the words "Williamis' Sub-Marine Compound" as a trade- 
mark for an anti-corrosive composition for preserving the bottoms 
of iron and steel ships and an anti-fouling composition for pre- 
venting the growth of marine substances. 

That applicant's name or that an acknowledged surname 
cannot be appropriated as a trade-matk is well settled. (The Brown 
Chemical Company v, Meyer et al., 55 0. G., 287). The word 
"Williams" is clearly not registrable. 

The words "Sub-Marine Compound" are descriptive in that 



20 



(-J 



I 



they mean a compound which is adapted for use under the sea, or a 
compound having characteristics or qualities which adapt it for 
such use. 

The action of the Examiner of Trade-Marks is believed to 
je correct and his decision is therefore affirmed. 

The record in this case discloses that a patent for the 
compound to which the words William s_ Sub> - marine Compoun d are applied 
was granted April 14, 1874, and therefore expired April 14, 1891. 
This patent is said to be for a new and useful improvement in Sub- 
marine Compound or Paint for War Vessels. 

Under the well settled practice of the courts and of the 

office, these words cannot now be appropriated by any <rne person 

to the exclusion of others manufacturing and selling the article. 

See the decision in Singer Manufacturing Company v. June 

Manufacturing Company, 75 0, G., 1703, Registration is further 

refused on this ground, 

(Signed) E, B. Moore, 

Acting Commissioner. 

October 14, 1901, 



'^^■ 



wriTy' 



1' 



^^ 



October 16, 1901. 



r/. ^.A/y^' 




UNITED STATES PATENT OFPIGE, 



Ex parte The Esterbrook Steel Pen 
Manufacturing Company, 



MS.D. Vol. 72, Page 16S, 



Trade-Mark for Steel and Metallic Pens, 



Appeal , 



Application for registration filed April 26, 1901; No, 63,244, 



Messrs, Steuart and Steuart for applicant. 



This is an appeal from the decision of the examiner of tradft- 
marKs refusing to register as a trade-mark for steel and metallic 
pens the title of an old and extinct firm to v/hich the applicant 
has succeeded, and which title is as follows: "R, Esterbrook & Oo,? 
and it is alleged that the said mark has been used in the business 
of the applicant and its predecessors continuously since 1860. 

It is urged on behalf of applicant that: 

"This is not a case of a 'name, merely as such, without more', 
(McLean vs, Fleming), but a name coupled with an arbitrary .initial 
as a prefix and the v/ords 'and Co,' following. Tliis is a peculiar 
and arbitrarily arranged collocation of words to none of which in- 
dividually would the applicant be entitled but to which collective- 
ly we submit he has an exclusive title," 



P5OT^^ 



■ ,;-Tn'^- 



^ 



The question to be decided in this case, as in any case where 
the question of a technical trade-mark is concerned, is whether or 
not the form of words for which registration is sought is one 
which "from the very nature of the fact conveyed by its primary 
meaning others may employ with equal truth and with equal right 

for the same purpose." See Elgin National Watch Co. v, Illinois 

''•''■'■ ■ '' T^'^ovi'^e '.'.'■:■ 

Watch Case Co., 94 O.G, , 755. In other words, do the prefixing of 

:..^ •. ::! >jV.o;:. x r^.;;^-:. .:.:'•?. -xc/: £»; -3^.0*3,. 

the initial and the addition of the words "and Oo,» to the surname 

.■■:■-■- jT. on:' r ut^ h«d •■'•■ • 

"Esterbrook", destroy the generic meaning of the latter and render 
it arbitrary in character? 

Upon careful consideration of this case in connection with the 
authorities cited in the brief for applicant, I am of the opinion 
that while the addition of the initial and the words "and Co." may 
limit the class of persons who could use the same in a lawful way, 
it does not cause the mark to become such a distinctive, arbitrary 
marK, as warrants its use as a technical trade-mark by this appli- 
cant to the exclusion of all other individuals, firms, or corpora- 
tions of the same name who may legitimately carry on the same busi- 
ness and who have a right to use their name in a lawful way upon 
their goods. 

Under the lav/ of "unfair competition" applicant may have a 
right to protection in his use of the fiim name "R. Esterbrook & 
Co.", but this fact does not render the words registrable as a 



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I 



technical trade-mark. Prom their very nature these words cannot 
constitute such a trade-mai3c. 

As in the case of ex parte Edwin G. Burt Company, 96 0,G, , 
1430, so in this present case, I appreciate the importance and the 
necessity for the registration of certain trade names as trade- 
marks, but inasmuch as the present law does not provide for or per- 
mit of such a registration as is asked for in this case, relief 
can only be had by means of a revision of the act authorizing the 
registration of trade-marks. 

The decision of the examiner of trade-marks is affirmed. 



211 



(Signed) E, B, Moore, 

Acting Commissioner, 



October 21, 1901, 



■■n-.-i, <^' 



V 




Tc/ 




1 O 



DEOISIONB or TSE U. S. OOUETS 



Supreme Oourt of the United States. 

TheHolzapfel's Compositions Company, Lim- 
ited, '0. The Rahtjen's American Composi- 
tion Company. 

Decided October 21, 1901. 

1. Trade-Mark— " Rahtjen's Cobiposition " Exclusive Eight 

Denied. 
Held that the respondents have no right to the exclusive use 
in the United States of the words "Eahtjen's Composition" 
as a trade-mark for paints, and therefore the decision of the 
court of appeals (101 Fed. Rep., 25?) reversed. 

2. Same— Same — Dhscripth'e Mark. 

Where before obtaining a patent in England, during the life 
of the patent, and after it expired tlie paint was sold under the 
'i nameof " Rahtjen's Composition "and that was the only name 
by which it was possible to describe it, Htld that the name 
was necessarily descriptive and did not designate the manu- 
facturers. 

3. Same- Name of Patented Article— Expiration of Patent- 

Foreign Patent. 
Where a party claims as a trade-mark in this country words 
used to describe a composition patented in England, Held that 
when the patent expires the right to make the composition 
and describe it by that name is open to the public. The prin- 
ciples involved in Singer Mfg. Co. v. Jjlne Mfg. Co.(163 U. S., 
169) apply notwithstanding the fact thai the gatent is a foreign 
one. 

4. Sam &^S am B— Right Based Upon Use Before Patent. 

"WTiere a party claims a trade-mark right to words used to 
describe a compositJou the patent on which has expired 
upon the ground that the mark was used before the patent 
was granted and it appears that in such use the mark was 
associated with words conveying the false impression that the 
composition was patented, Held that the c'^im cannot be sus- 
tained. 

5. Same— False Assertion in Maue— Mark I.waliu. 

A symbol or label claimed asa trade-mark so constituted o:., 
worded as to make or contain a distinct assertion which ie 
false will not be recognized, nor can any right to its exclusive 
use be maintained. 

6. Same — Same — No Right to Mark Used in Connection With 

False St.\tement. 
No right to a trade-mark which includes the word " patent ' ' 
and which describes the article as '"patented "' can arise when 
there is and has been no patent, nor is the claim a valid one 
for the other words used where it is based upon their use in 
'.connection with that word. 

7. Same— Disclaimer OF Mark— Successors in Business Bound 

BY Disclaimer. 
■^^lere the manufacturers of the paint in order to obtain it 
, trade -mark in England expressly disclaimed the exclusive 
right to the words "-Rahtjen's Composition,'" Held that the 
disclaimer is not confined tc England ana thr.t >*■ is bindin;.'' " 
upon thein. Held^ further, that their successors in bu'^ines':, 
did not and could not ji.o,c^uir.o. from them the exclusive righii 
to the words as a trade-rhiirk. 

On "writ of certiorari to the United States Circuit 
Court of Appeals for the Second Circuit. 



1 



L 




STATEMBXT OF THE CASK. 

■■"he respondent, a New York corporation, com- 
menced this suit in equity in the Circuit Court for 
the Southern District of New York, against the 
petitioner, wljich is a foreign corporation organ- 
ized under the laws of the Kingdoui of Great Brit- 
ain and having a place of business in the city of 
New York, to restrain it from the use of the trade- 
mark which the respondent averred it had ac- 
quired in the name " Rahtjen's Composition," and 
to obtain an accounting of the profits and income 
which the petitioner had unlawfully derived from 
the use of such trade-mark, and whicli it had by 
reason thereof divertedfromthe respondent. Issue 
as taken on the various allegations in the bill, 
and upon the trial the circuit court dismissed the 
same, (97 Fed. Rep., 949,) but upon appeal to the 
circuit court of appeals the decree of the circuit 
court -was reversed and the case remanded to that 
coxivt with instructions to enter a decree enjoining 
the petitioner from selling or offering to sell. Raht- 
jen's Composition under that name, and from u.slng 
the name upon its packages or in its advertise 
ments. (101 Fed. Rep., 2.57; 41 C. C. A., 339.) 

Judge Wallace dissented from the judgment am I 
opinion of the circuit court of appeals, holding that 
the case was properly decided in the coiut below, 
and that the decree ought to be affirmed. 

The defendant and petitioner then prayed this 
Court for a writ of certiorari, which was granted, 
and the case thus brought here. 

The trade-mark in regard to which this contest 
arises pertains tG<^g, certain kind of j)aint for the 
protection of ships' bottoms from rust and from 
vegetable or a,nimal growth thereon, either in salt 
or fresh water. The paint was of three kinds, num- 
bered, respectively, Nos. 1, 3 and 3. The evidence 
Iri'the record shows that some time between the 
years 1860 and 18C5, one John Rahtjeh invented in 
Germany a particular kind, of paint for the pur- 
po'-e above mentioned. In connection with his 
sons he began in 18ii5 to manufacture the paint tor 
general use, and it speedily acquired a high repu- 
tation among owners of shipising as valuable for 
the purposes intended. The elder Rahtjeh never 
obtained a patent for the article in Germahy,; 
neither did he or his sons api^ly for or obtain one' 
in the United States. They first shipped sorde of 
the paint manufacturedby them in Germany to the 
United States in 1870, consigned to Henry Gelien. 
They did not put it uiDon the market by sending 
generally to those who might wish to use it, but all 
their consignments from. 1870 to 1878 were made to 
Gelien. Under what marks he sold the article does 
not appear. 

On November 19, 1809, one of the firm wrote to 
Mr. Gelien from Bremerhaven, making him the 
sole agent of the firm for the sale of its paint in the 
United States, and informing him that they had 
not obtained a patent for their oompositioft itr 
America nor applied for one in the United States, 
as there was no danger in introducing the compo- 
sition in America, the invention not being of a na- 
ture facilitating good imitations. The father died 
in 1873, after which the sons continued the busi- 
ness. 

Gelien was succeeded as the consignee of the 
paint in the United States, in 1878, by the firm of 
Hartmann, La Doux & Maecker, to" whom for a 
short time the paint was consigned from Germany, 
and then it was sent them from England through 
Rahtjen's assigns there. The Hartmann firm was 
succeeded in July, 188G, by Emil Maecker, as agent 
for the sale of the paint in the United States, and 
on January 1, 1889, Maecker was succeeded by one 
•Otto L. Petersen, and in 1891 Petersen was suc- 
ceeded by the respondent corporation, and was 
— J- \^ii president. 



R7»;-'VS(\ 



21 -H^ 



^^ On JanuaryjJ, 1S7S, ^' Joh" Rahtien assigned to 

Messrs. t u-^r, Hartmami & Co., in London, the 

I S?;?^'' ri^^*T °i ^fS °f ™y patent composition 

I ?hi^t^?' A^U^i'^*^ ^*^*«« °f North America, for 

of isfs ? fi twelve years from the commencement 

H«r?I..t? ^^ ^t^ °^ ^^^^■" ^^"e^ 1870 the firm of 

m^^lT ^^'■°"'ers, or Suter, Hartmann & Co., 

Pn^i=^-?T'®?u*^,^ composition for themselyes in 

timf «?*-^;.Vj7i''Tl ^i^."?"'^ '?^ "^« Rahtjens, and for a 

time after 1874 Rahtjen also manufacturod in Eng- 

co^T,o'«,Tf„ *' '^ Germany. During this time the 

TTor+.^ h^'ir ^.^^*J®^s Patent Composition, 

Hartmann s Manufacture. " Up to the tuSe of the 

I theTnafn^^rr* ^^^.^^a^jlns had consignel 

inSh f^. ^^! t"*^ '^'*^ ^^b«l« affixed thereon. 
Parent Cn^.,ft'?'^ ^''"^^'•"■^'^^'i as "Rahtjen's 
DonT V M?^ v'*T' *°'* after Hartmann La 
adXestd^ftl^Tfi^^"^?.^ ^"«°*«' t'le casks were 
sanie way. "^ ^ ^^"^ ^ """^ '^'^'^ ^^"^^^^d the 

is^Jf^ S.!!™'' ''^*,^'^ ^J consignee he prepared and 
eulars wffh'^fcfi^?- *°'i,also letter-heads and cir- 
As thP r w.. I^ahtjen's Composition Paint, known 
headini"of^.t i-^ff ''*• °5 *^^ ^^^'^^ and on the 
reetlvnn^i^ letters and circulars, and also di- 



2 O 



In 1873 they entered into negotiations with Sutef 
Hartmann & Co., in England, for the sale of their 
paint in that country, and on November 29, 187u; 
Heinrich Rahtjen obtained in England a patent 
for the paint for the term of fourteen years from 
the date thereof, provided, among other condi- 
tions, he should at the end of seven years pay a 
stamp duty of one hundred pounds, and in case he 
did not pay, the patent was to "cease, determine 
and become void." It remained in existence for 
seven years, or until November 3!), 1880, and then 
ceased because of the failure to pay the one hun- 
dred pounds stamp duty as provided for in the 
•patent. 

The label used by Suter, Hartmann & Co. in send- 
ing the paint to their different agents and cus- 
tomers contained the words "Rahtjen's Patent 
Composition" and "None genuine without this 
signature, Suter, Hartmann & Co." These words 
were used by them from the outset of their career 
as consignees for the composition. 

In May, 1883, two years and a half after the ex- 
piration of the English patent, the predecessors of 
the petitioner commenced in England to make and 
sell this paint, and in 1884 they sent it to the United 
States under the name of " Rahtjen's Composition, 
HolzapfeFs Manufacture." 

On June 25, 1883, John Rahtjen filed with the 
English office an application for registration as a 
trade-mark of the words " Genuine Rahtjen's Com- 
positionfor Ships' Bottoms," &e. This application 
was opposed by Holzapfel & Co., through their 
soUcitors, and no counter-statement having been 
filed by Rahtjen the application was.deeuied to be 
withdrawn. 

On July 7, 1883, Rahtjen filed another applica- 
tion for registraliQn,pjEi the words "Rahtjen Com- 
position." This; tSo, was opposed, and the appli- 
cation ther^Sfter held to be withdrawn. 

On June 28, 1883, Suter, Hartmann & Co. filed an 
application for registration of the words "Raht- 
jen's Patent Composition for Ships' Bottoms, 
Buoys, &c. None genuine without this signature, 
Suter, Hartmann & Co." This application was 
opposed by defendant's predecessors, Holzapfel & 
Co., dnd was withdi'av?!!. " ■-'' 

On the 25th of April, 1883, Hartmann Brothers 
filed an application for a trade-mark in this form: 



r 



■Gpfiiv^i 




TRADE MARK' 



^N'S~M^NVJ^'^' 



s^^"^^ 



The appUcation was granted, and from that tinie 
thev had an exclusive right to use that mark, it 
is not charged that the defendant has ever m any 
way uuitated or infrmged upon it. 

On January 9, 1884, Suter, Hartmann & Co. filed 
an appUcation for the registration of the words 
"Ba£tjen's Patent Composition for Ships Bot- 
toms, Buoys, &c. Directions tauter Hartmann 
& Co " In their application for registration they 
said- '"We do not claim the exclusive use of the 
words 'Rahtjen's Patent Composition for ^hips 
Bottoms, Buoys, &o. Directions,' or any of such 
words, eiceptas part of the combination constitut- 
ing om trade-mark, as represented annexed, and 
to wlSh we claim exclusive right." .This trade- 
mark was registered. The foUowmg is a copy. 



RAHTJEN'S 
PATENT COMPOSITION, 

Fob Ships' Bottoms, Buoys, &c. 

Directions. 

Suter, Habtmann & Co. 



There has never been any infringement of it by- 
defendant, but it has used the words Ralitjens 
Composition'-' ihufeoiaoection. with ths: sfetement 
S it was manufactured ^^T Ho^^P.^^l t<P?;' ^^^ 
it has so used them on goods sold in the United 
i States, and did so at the tune of the commence- 
ment of this suit. ,_ ■. „ X ^„ i- ri,i /, 
-i- - Before the assignment to Suter, Hartmann & 007- 
J-t>f the exclusive right to seU the composition in th« \ 
J-^UnitWd States, Rahtjen had transferred to Hait^ 
iii&bn Brothers in England the exclusive right to 
manufacture it there, and so in their manufacture 
it was described as "Rahtjen's Composition. Hait- 
mann Brothers' Manufacture." 

In 1888, Suter, Hartmann & Rahtjen's Composi- 
tion Company (Limited) was formed, and buter, 
Hartmann & Co. assigned their rights and inter- 
ests m the paint and trade-mark to that company 
' and In 1891 the respondent company -was lormea 
and the English company transferred to it all rights 
to the trade-marks belonging to and used by tne 
EHgUsh compainy in America, and agreed not to 
■carry on any business of a like character in the 
United Slates. ±r. n t- t 

In 1899 complaint was made before the Court oi 
Commerce, sitting at Antwerp, by Rahtjen and by 
Suter, Hartmann & Co. against defendant W 
Wright, in which they eomplamed of thedefendant 

that he had put on the sign of his house the m- 
scription "Manufacturers of Rahtjen's Compos - 
tion," and that in his Prospectus and other publi- 
cations he announced that he sells the Original 
Rahtjen's Composition for Ships' Bottoms, manu- 
factured by the London Oil and Colour Co., Lim- 
ited " This use of the name of the complamant by 
the defendant, the court held, constituted an illegal 
act, and even if the complainants had a?t retained 
then- right to the use of the words Rahtjen s 
Composition, " that the defendant had not acquired 
the right to use the name in such a -way as to cause 
the pubUo to believe that his product was the prod- 
uct of Rahtjen or of his delegates. 



*14 



The del'eiulaut 
was therefore condemned in iudgiiient and en- 
joined from the use ot the ^'°^'^.^}''J'^Z%h'^'^ouH 
peal was taken from this decision and the couit 
above reversed the . udguient, holdmg that tie 
Same ''Rahtjen's Composition" had become the 
pr^erty of ttie public, which had the right to ot- 
Fer it fo? sale under the name generally used to de- 
scribeit, because any other name would complete y 
rnislead the purchaser, always supposing that the 
pubUc is not^to be led 'astray as to the md.vu uai 
Ftv of the manufacturer, or as to the source of tbe 
Rfl^d Jroducts As it is shown by the documents 
denos^teShe present process that the varnish 
fnTnted by the Associate is generally known m 
Fnlland and in Belgium under the name of Raht- 
wrComposmon; s^o that in the eyes of the pub- 
Uc th^^ame of Rahtjen has become a sort of quali- 
f^g adjective indicative of thi^s . special Product; 
Z the appeUant has always in his sign ajid m nd 
cU-culars been careful to announce that the prod- 
uct that he sells was manufactured by tlie ' L°ndon 
Oil and Colour Company,' " the court held that th^ 
intention of bad faith which constitutes an element 
necessary to the estabhshment ot breach of faith 
had no actual existence, and the judgment was 
therefore reversed. 




3 O 



Complaint had also been made by Mr. John 
Rahtjen in the court at Hamburg against Holzap- 
fel and others for the wrongful use of the words 
" Rahtjen's Composition," and that court held in 
substance that there was no longer any exclusive 
property in the words used, and that the defend- 
ants should, therefore, be discharged. 

Mr. John Q. Carlisle, 3fr. William McAdoo, Mr. 
F. P. B. Sands, and Mr. R. B. MoMaster for the 
petitioner. 

Mr. Timothy J). Mertvina,nd3Ii: Thomas B. Kerr 
for the respondent. 

Mr. Justice Peckham, after making the above 
statement of facts, delivered the opinion of the 
Court. 

We are of opinion that no valid trade-mark was 
proved on the part of the Rahtjens, in connection 
with the paint sent by them from Germany to 
their agents in the United States prior to 1873, when 
they procured a patent in England for their com- 
position. It appears from the record that from 
1870 to 1879, or late in 1878, the paint was manu- 
factured in Germany by Rahtjen and sent to the 
United States in casks or packages marked " Raht- 
jen's Patent Composition Paint." 

Prior to November, 1873, the article was not pat- 
ented anywhere, and a description of it as a pat- 
ented article had no basis in fact, and was a fal.se 
statement tending to deceive the purchaser of the 
article. No right to a trade-mark which includes 
the word "patent," and which describes the article 
.^^ '■' patented " can qorise when there is and ha$ been 
no patent, nor is thfe claim a valid one for the other 
words used where it is based upon their use in con- 
nection with thatword. 






A symbol or label claimed 
as a trade-mark, so constituted or worded as to 
make or contain a distinct assertion which is false, 
will not be recognized, nor can any right to its ex- 
clusive use be maintained. (Manhattan Medicine 
Company Y. Word, 23 O. G., 1925; 108 U. S., 318, 225; 
Wrisley Co. v. Iowa Soap Co., 104 Fed. Rep., 048.) 

In 1873 an English patent had been obtained, and 
from thattime to 1878, when the Rahtjens assigned 
the exclusive right of sale in the United States to 
Suter, Hartmann & Co., the words " Rahtjen's 
Patent Composition " were used on casks contain- 
ing the paint sent by the Rahtjens to the United 
States, and mvist have referred to the English pat- 
ent, as there was no other, and the right to use 
those words depended upon the existence of the 
patent, although up to 1878 the article sent to the 
United States was manufactured in Germany. As 
the right to use the word depended upon the Eng- 
lish patent, the right to so designate the composi- 
tion fell with the expiration of that patent, and 
from that time (1880) until 1883; when the trade-mark 
was obtained by Suter, Hartmann & Co., there 
can be no claim made of an exclusive right to desig- 
nate the composition as Rahtjen's composition, be- 
cause from 1880 that right became public as a de- 
scription of the article and not of the name of the 
manufacturer. During its whole existence thp 
jiame had been given to the article, and that was the 
only name by which it was possible to desprijje it. 

The labels used by Suter, Hartmann & Co., from 
the outset of their career as sole consignees, con- 
tained the description "Rahtjen's Patent Compo- 
sition, None genuine without signature, §uter, 
Hartmann & Co. " These labels were affixed to the 
packages, and were sent to Rahtjen in Germany 
when he manufactured for them, to be placed on 
P^eka,ges, and when he subsequently made ti^e 
composition in England the labels were sent to him 
there to be affixed. This way of designating the 
composition was employed by Rahtjen in Ger- 
many for his own sales, and Suter, Hartmann & Co. 
simply copied his method of describing the same. 
How else could this article thereafter be described? 
When the right to make it become public, how 
else could it be sold than by the name used to de- 
scribe it? And when a person having the right to 
make it described the composition by its name and 
said it was manufactured by him, and said it so 
plainly that no one seeing the label could fail to 
Bee t}|*t the package on which it was placed was 
Rahtjen's (jon^position iiiani^factured]by Holzapfel 
& Co;, or llolzapfel's Composition Company (Lim- 
ited), how can it be held that there was any in- 
fringement of a trade-mark by employing the only 
terms possible to describe the article the manufac- 
ture of which was open to all? Of necessity when 
the right to manufacture |)ecara& public <;h'e right 
to use the only word descriptive of the ai'ticle 
Aanufactured became public also. 





2: 



This rule held good wh^ at the expiration of the 
patent in November, 1880, Suter, Hartmann & Co. 
continued to send the paint to the United States 
as "Raht Jen's Patent Composition, Hartmann's 
Manufacture," because it is plain that the name of 
Rahtjen had, as we have said, become descriptive 
of the article itself, and was not a designation of 
the manufacturer. It had been manufactured both 
in Germany and in England at the same time, and 
that which was manufactured in England by Hart- 
mann Brothers or Suter, Hartmann & Co. had been 
distinguished from the German article by the state- 
ment that it was ' ' Rahtjen's Genuine Composition, 
Hartmann's Manufacture." If anyone had desired 
to use this paint and had called for it in the mar- 
ket, he would necessarily have been compelled to 
describe it as "Rahtjen's Composition," as there 
was no other name for the article, and though in 
England while the patent lasted no one but the 
patentee or his licensees could manufacture the 
article, yet the description would still have been 
"Rahtjen's Composition;" but when the patent 
expired the exclusive right to manufacture the ar- 
ticle expired with it, while the name which de- 
scribed it became, under the facts of this case, nec- 
essarily one of description and did not designate 
the manufacturers. There was no other name for 
the article, and in order. to obtain it a person would 
have to describe it by the words " Rahtjen's Com- 
position." The words thus became public prop- 
erty descriptive of the article, and the right to 
manufacture it was open to all by the expiration 
pi the English patent. After Suter, Hartmann & 
Co. obtained the trade-mark of anopenhand, origi- 



4 O 



nally painted red, together with the name " Raht- 
jen's Patent Composition," which was sometime 
in 1883, the paint was sent to the United States un- 
der that designation ; but the trade-mark was not 
obtained without the positive disclaimer by the 
• plaintiffs of the right of exclusive use of the words 
"Rahtjen's Composition," and unless they dis- 
claimed that exclusive right they could have ob- 
tained no trade-mark. 

The registration of the trade-mark of Hartmann, 
La Doux & Maecker in the United States in June, 
1885, was not only subsequent to the expiration of 
the English patent, !but also subsequent to the 
time wben tbe defendant company had commenced 
to manufacture the paint as "Rahtjen's Composi- 
tion, Holsjapfel's Manufacture," and had sent the 
same to the United States under that description, 
at least as early as 1884. The United States regis- 
tered trade-mark could not, therefore, interfere 
with the prior (but not exclusive) right of the de- 
fendant to the use of those words. 

The respondent company advertised and sold in 
the United States the composition under the name 
of " Rahtjen's Composition, Hartmann's Manufac- 
ture," while the petitioner advertised and sold its 
composition as "Holzapfel's Rahtjen's,"or "Holz- 
apfel's Improved Rahtjen's Composition," or 
"Holzapfel's Improved American Rahtjen's;" so 
it is seen there is no room for the claim that the 
composition manufactured by the petitioner pur- 
ports to be manufactui'ed by Rahtjen or Hart- 
mann, It is a clear-cut description of the name of 
the article which it manufactures, and there is no 
pretense of deceit as to the person who in fact 
manufactures it. 



The trade -marks which have been spoken of, 
and which were obtained in 1883 and 1884, do not 
cover the right to use the name "Rahtjen" exclu- 
sively. The trade-mark obtained in April, 1883, by 
Hartmann Brothers, detecfibed as the "red hand 
symbol," does not purport to contain any name, 
while that issued to Suter, Hartmann & Co., while 
It contained the name "Rahtjen's Patent GofliiJO- 
sition, " was obtained only by the disclaimer on ihe 
part of the applicants of the right to the exclusive 
use of those words, except as part of the combina- 
tion constituting the trade-mark. Prior to the Eng^ 
lish patent, the respondent's predecessorsjor as- 
signs had no valid trade-mark in England for the 
same reason the Rahtjens had acquired npne 14 
the United States, viz., they had no right to des 
ignate the composition as a patented article when 
in fact there was no patent. From 1873 to 1880, 
while the patent was in life, they were entirely jus- 
tified in calling it a patented article, and when 
that patent expired, it seems clear they had no 
right to retain the exclusive use of the only name 
which described the composition, and that no such 
right could be claimed by virtue of a valid trade- 
mark antedating the patent, for there was none, 
assuming even that- such fact, if it had existed, 
would have justified the claim to the exclusive use 
of the descriptive words after the patent had ex- 
pirecj., ' ' ' '' 

The judgments in the Antwerp and Hamburg 
courts simply showed that in those countries the 
use of the words "Rahtjen's Composition" or 
" Rahtjen's Patent Composition" had become de- 
scriptive of the article itself and did not in any 
way designate the persojoSiWho rnaniifactured it ; 
but eyen. without .those judginehts, ' the Jrepprd 
shows beyond question that when the English pat- 
ent expired the use of the words became open to 
the world as descriptive of the article itself, and to 
manufacture an article under that name was a 
right open to the world. There was no trade- 
mark in that name in the United States. 

The principles involved in Singer Manufactur- 
ing Company v. June Manufacturing Company/, 
(75 O. G., 1703; 163 U. S. 169,) apply here. 

It is said there is a distinction between the case 
at bar and the one cited, because in the latter the 
patent and the trade-mark were both domestic, 
while here the trade-mark is domestic and the pat- 
ent foreign. The respondent claims the right to 
use these words by virtue of assignments from the 
Messrs. Rahtjen and also Suter, Hartmann & Co. 
in England, and also by virtue of a domestic trade- 
mark which it or its predecessors had acquired 
from user and registration in the United States. 
The rights of Suter, Hartmann & Co. to the exclu- 
sive use of these words had been disclaimed by them 
in 1833, long before any assignment of their rights 
to the respondent, and we do not see why that dis- 
claimer should be confined to England. It was a 
general disclaimer of any right whatever to the ex- 
clusive use of these words, and it was only upon 
the filing of that disclaimer that they obtained the 
trade-mark which they did in England. The dis- 
claimer, however, was as broad as it could be made. 
When they assigned their rights the assignment 
did not include a right to an exclusive use which, 
in order to obtain the trade-mark registration, they 
had already disclaimed. The assignment of the 
Rahtjen firm could not convey the exclusive right 
to the use of such words, because they had no vaUd 
trade-mark in those words prior to 1873, and by the 
expiration of the English patent, in 1880^ the right 
to that use had become public. 



xnoi'Ci-uanA r\J 



These various as- 
signors, therefore, did not convey by their assign- 
ment a right to the exclusive use of the words in 
the United States. The domestic trade -mark, 
which the respondent also claims gives it that 
right, was not used until after the sale of the com- 
position by the petitioner in the United States un- 
der the name of "Rahtjen's Composition, Hol- 
zapfel's Blanufacture." AVe tliink [the principle 
which prohibits the right to the exclusive use of a 
name descriptive of the article after the expiration 
of a patent covering its manufacture applies here. 

In the manufacture and sale of the article, of 
course, no deceit would be tolerated, and the arti- 
cle described as "Rahtjen's Composition " would, 
when manufactured by defendant,"have to be 
plainly described as its manufacture. The proof 
.eh^ws this has been done, and that the article has 
b^en sold under a totally -different trade -mark 
,from any used by respondent, and it has been 
plainly and fully described as manufactured by de- 
fendant or its assignors, the Holzapfels. 

We are of opinion that 'no right to?;he exclusive 
use in the United States of the words " Rahtjen's 
Composition " has been shown by respondent, and 
that the decree of the Circuit Court of Appeals for 
the Second Circuit should be reversed, and that of 
the Circuit Coui't for the Southern District of New 
York a£Elrmed. And it is so ordered. 

1 A 

OOMMISSIOlfER'S DECISIONS, 



Caret v. 'The New Home SEWiNe Machine 
Company. 

Decided October 10, 1901. 

1. Protest Against Issde op Patent— PbotestInt Not En- 
titled TO A Hearing, 
a party properly obtaining a knowledge of an application 
pending in tlus Office may file a protest against the issue of a 
patent upon it and may therein call attention to any facts 
within his knowledge which, in hi.s opinion, would make the 
gi-ant of a patent improper; but he does not thereby obtain 
the right to argue the question before the tribunals of this 
Office. (Fowler v. Benton, IT O, G., 266, modified.) 

B. .Same— Same— Question is Ex parte in Character. 

The question of patentabiUty is ex parte in character and is 
one between the applicant and the Office on behalf of the pub- 
Uc, and noone member of. tire public can be recognized as hav. 
ing such an interest in the grant of a patent as to entitle him 
to contest the matter any further than to call attention to 
matters which he considers bars. 

8, Same— Same— Party to Interference has no Right to a 
Hearino. 
A party to an Interference has no more right to raise the 
question of patentability of his opponent's claims than third 
parties, except as provided in Rule 12i3. After the time set in 
that rule the Commissioner will not give him a hearing in sup- 
port of a protest filed as a matter of right, since to do so would 
be to nullity Rules 132 and 124. 

4. Protest— Trade-Mark— Matter Referred to Examiner. 
A protest by a party to the interference against the regis- 
tration of the opposing party's trade-mark was referred to 
the Examiner of Trade-Marks for ex parte consideration after 
the conclusion of the tnterferenoe. 

On protest. 



Application of Ella J. Carey filed December 8, 
1900, No. 62,248. Application of The New Home 
Sewing Machine Company filed February 9, 1893, 
No. 41,113. 

Mr. Clayton E. Emig for Carey. 
Mr. Charles F. Dane and Mr. H. P. BooUttle for 
Sewing Machine Company. 

Allen, Commissioner: 

This is a protest by Carey against the registra- 
tion by The New Home Sewing Machine Company 
of the word "National" as a trade-mark for sew- 
ing-machines. 

Carey made application for registration of the 
wordB " New National " as a trade-mark for sew- 
ing-machines, and an interference was then fle- 
clared with the application of The New Home Sew- 
ing Machine Company covering the word "Na- 
tional." Carey moved to dissolve on the ground 
that there was no interference in fact, and her mo- 
tion was denied by the Examiner of Trade-Marlcs 
and hy the Commissioner on appeal. She then 
moved to dissolve on the ground that the mark is 
not registrable; but this second motion was re- 
fused transmission to the Examiner of Trade-Marks 
because made too late. Before the second motion 
was disposed of the present protest was filejJ. 

1% is contended on behalf of Care/thai a hear,- . 
ing should be given by the Commissionei' on this 
protest at which both sides might appear and ar- 
gue the merits of the question. In support of tMs 
the decision in i^'oioZerv. Bentoii(VllO. G., 266; C. D., 
1880, 89) is cited, in which it was said: 

But the same result s are attainable by exjiarte protests against ' 
tbo graitr o£ patents subject to the restrictions of Rule 19, whicU a^ 
protests are always iu order. If the Examiner, overruling a mo- |S 
tion to dissolve an interference, should afrirni his previous deci- t| 
sion in favor of the pa tentability of the invention, the party who 
made the motion would not be precluded from protesting against , 
the grant of the patent on the ground of the nou-patcntabihty \\ 
of the invention. Such protest would be entertained by the Com- 
hiissioher either forthwith or after the determination of the in- 
terference, or at such othei- time as justice might seem to re-' 
quire in the particular case. 

This is a trade-mark interference; but the prac- 
tice in such cases follows as closely as possible that 
in interferences in patent cases, and therefore it is 
pertinent to consider the rules and authorities bear- 
ing on the practice in patent cases. 

The situation here differs from that referred to 
In the decision cited in that Carey has presented no 
proper motion for dissolution on the ground that 
the mark is not registrable; but without regard to 
that difference it is believed that to entertain this 
protest in the way requested would not be proper 
practice. 

If the decision in Fowler v. Benton means, as 
contended, that after a favorable decision by the 
Examiner on the question of patentability a party 
may file a protest against the issue of a patent and 
as a matter of right demand a hearing before the 
Commissioner, it in effect nullifies Rule 124, which 
specifies that there shall be no appeal from a favor- 
able decision on the question of patentability. It 
not only practically nullifies the rule that no ap- 
peal shall be taken, but changes the course of ap- 
peal prescribed in Rule 124 for questions of pat- 
entability, since it makes a decision by the Exam- 
iner upon the merits reviewable in the first instance 
by the Commissioner instead of the Examiners-in- 
Chief. It is not believed that the decision was in- 
tended to have any such meaning or effect. Com- 
missioner Paine was there considering this very 
rule, which prohibits an appeal from a favorable 
decision, and made the suggestion, as mere obiter 
dictum, that although an appeal would not be en- 
tertained a protest might be filed. It is not to be 
presumed that this suggestion was made with the 
purpose of evading the rule which had^j^ust been 
established, although as worded it would appear 
to have that effect. If it has the meaning con- 
tended for, it i^^ not believed to ^.et forth proper 
practice. 



217 IK 



2 A 



A party properly obtaining a knowledge of an 
application pending in this Office may file a pro- 
test against the issue of a patent upon it and may 
therein call attention to any facts within his knowl- 
edge which, in his opinion, would make the grant 
of a patent improper. He does not, however, there- 
by obtain the right to argue the question before 
the tribunals of this Office. The question of pat- 
entability has been uniformly looked upon as ex 
parte in character. It is a question between the 
applicant and the Office on behalf of the public, 
and no one member of the public can be recognized 
as having such an interest in the grant of a patent 
as to entitle him to contest the matter any further 
than to call attention to matters which he consid- 
ers bars. The Office will consider facts called to 
its attention, but wiU not give the protestant »- 
hearing as a matter of right. 

It is true that a party involved in an interference 
is permitted to argue this question on a motion to 
dissolve under Rule 133; but this is for the reason 
that it has a bearing upon the question whether 
the interference shall be continued. It is only by 
complying with the rule that he has the right. 
Where he fails to take advantage of the rule or 
where he is defeated on a motion made, he has no 
more right thereafter to raise the question by pro- 
test against the issue of a patent and demand a 
hearing thereon than any other member of the 
public having a knowledge of the facts. As said 
by the court of appeals in refusing to consider the 
question of patentabiHty in the interference case 
otmu^. Sodge, (83 O. G., 1211; C. D., 1898, 480:) 

When that question shall be raised, Hill mil have no other in- 
terest in its decision than as one of the general public whose in- 
terests are under the protection of the Commissioner of Patents. 

If a different view of the matter were taken, Rule 
133, setting a time limit within which the question 
maybe raised, and Rule 124, stating that no appeal 
may be taken from a decision favorable to patent- 
ability, would be meaningless. These rules do not 
have reference merely to the name which the'party 
chooses to give to the action, whether appeal, pe- 
tition, or protest. They have reference to sub- 
stance and not mere form. 

As said in Manny v. Easley v. Greenwood, (48 

O. G., 538; C. D., 1889, 179:) 

Parties cannot confer jurisdiction upon the Commissioner re- 
gardless of the matter involved by the use of a mere form of 
words. Beneath the words must be sought the real reason on 
which the proceeding is based. 

If in any case the Commissioner grants a hearing 
to a party protesting against the grant of a patent, 
he does so not as a matter of right on the part of 
the protestant, but by an exercise of his supervi- 
sory authority, because he considers'it advisable 
for his own information under the chcumstances 
of that case to hear the arguments which may be 
advanced. 

It is held that tfie protestant is not entitled to a 
hearing in support of her protest, and to this ex- 
tent the decision in Fowler v. Benton, supra, is 
modified. 

The protest will not now be passed upon,' but is 
referred to the Examiner of Trade-Marks for ex 
parte coiisideration after the interference is con- 
eluded. If he is of the opinion that in view thereof 
the trade-mark is not registrable, he wUl reject the 
apphcation ; otherwise no action on his part will 
be necessary. 




m 



n 




October 23, 1901, 

UNITED STATES PATENT OFFICE, 



Ex parte The Columbia Incandescent Lamp Company. 



MS.D. Vol, 7S, Page 189. 



Trade-LIark for Incandescent Lamps, 



Appeal, 



Application for registration filed April 29, 1901; No. 63,267. 



ilessrs, Carr and Carr for applicant. 



This is an appeal from the decision of the Examiner of Trade- 

MarXs refusing to register a trade-mark for lamps described as 

"the sjnnbol W. inside of a circular band." The marX is further 

C.P. 
described as follov/s: 

This trade-raarX has generally been arranged as shown in the 
accompanying fac-simile, in which the letter is made to fonn 
about three-fourths of a circular band and the band is completed 
with the letters "olurabla". The letters "olumbia" are in plain 
black capitals of a height equal to the width of that portion of 
the band which constitutes the letter C, and stand radially in an 
arc in continuation of said band. Inside of said band is a hori- 
zontal line with the letter W, above it and the letters C.P. below 
it. Upon that portion of the band v/hlch constitutes the letter C 
are the words "FilSkraent made by Columbia Incandescent Lamp Co.* 
in small capital letters of the color of the paper, which generall] 
is white. The words and letters of the circular band may be 
changed or omitted therefrom without materially altering the char- 
acter of said trade-mark, the essential feature of which is the 
^:?3anbol Wjt inside of the circular band." 
C.P. 




219 



In a former decision in this saiue case ( ex parte Gol\Mbia 
Incandescent Lamp Company, 96 O.G, , 1036) it was held that the word 
"Columtiia" arranged in the form of a circular band and the symbol 

W. inside of said band could not be registered for the reason that 
C,P. 
the word Columbia "which is common property is not made the prop- 
erty of any one individual by associating it with certain arbitrary 
symbols which in themselves may be registrable." 

By the amendment to set up the essential feature of the trade- 
mark as "the sjnnbol W. inside of the circular band," applicant has 

O.P. 
endeavored to overcome the former objection. It appears, however, 

from the description quoted above, that the circular band is formed 
partly by the letter G^ and completed by the letters "olumbia". 
It is evident therefore that the "circular band" comprised in the 
essential features of the mark includes both the letter "C" and the 
letters "olumbia* or, in other words, the word "Columbia" is still 
included as an essential feature of the mark. 

The reasons for refusing registration stated in the foimer 
decision in this case still hold good. 

The decision of the Examiner of Trade-Marks is affirmed, 

(Signed) E. B, Moore, 

Assistant Commissioner, 
October 25, 1901. 



October 16, 1901 S. E. T. 

UNITICD STATES PATENT OFFICE, 



,^ 



Ex parte Gill Brothers and Company, 
MS. D,, Vol. 72, Pag« 169. 



Trade-Mark for Glass Lamp Chimneys, &c. 



Appeal. 
Application for registration filed June 7, 1901, No. 63,540o 



Mtssrs. Steuart and Steuart for applicant o 



This is an appeal from the action of the examiner refus- 
ing to register the word "Modoc" as a trade-mark for glass lamp 
chimneys, glass reflectors, and glass lantern globes, on the ground 
of its geographical meaning. 

The rule that "a trade-inark cannot consist of words in 
common use as designating locality or region of country" is well 
settled. Canal Co. v. Clark, 1 0. G., 279; Columbia Mill Co. v. 
Alcorn et al., 65 0. G«, 1816; ex parte Little and Company, 
85 0. G., 1221. The appellants do not question this rule, it is 
contendedj) however, that the fanciful meaning of the word "Modoc" 



-ssili 



63,540, 2. / 

is greater than any geographical ^meaning that it may have, and for 

this reason, It is registrable, ( Ex par te Little and Company, six 

pra.) It was well statid in said^decision ( ex parte Little and 
— ~ egistraoxfc ai- -m^r^- 

Company, supra , y that me'ely because a word appears in the Postal 

Guide as the name of a past office, it does not necesssurily acquire 

such a geographical meaning as to prevent its adoption as a trade- 

ma.r'k when it has a primary significance not geographical* The word 

"Modoc" not only appears in the Postal Guide, but is the name ofma 

county in the State of Oalif ornia» Being the name of a county 

in one of the states, :t certainly designates a "locality or region 

of country," and therefore has a geographical significance. 

Counsel for appellants state in speaking of the fact 

that the word "Modoc" designates a county in the State of California: 

"It is very certain we did not know it before this 
application was filed, the applicants did not know of it, and 
we doubt very mich whether the Examiner knev/ of it until he 
began to study ;he question," 

This lack of knowledge is not the true test. The test 
is whether or not t,ie word sought to be registered does refer to a 
region of country, ' This fact is known now to the parties inter- 
ested and to this office-, whether it was known before the applica- 

i 
tion was filed or not. It was known to the inhabitants of that 

county and probably to many other people before the appellants 
adopted the word. 

The word "Modoc" being the name of a county of a state 

of th« Union, it is held that the word designates a "locality or 






P 



f 



1 .2 ,OM,E 

ins eX«« e^naa xe ) noxaloe* Mb= ai S...«.e Hew «w « ( -s; 

,.,„po. .X.-,a=a.oan .on .eo. .. .eoX«<> >=.. . ^o a.Bn s.. .b ,M 

.,,„, . ,B no»,o6B sn .aave., o, .« sn^Be. XBoWdB-^BOes B ri. 

,.ow artT .XBOXn,B.B-S .on eonBoi..n,t= .-^a-i-q b nsrt n ne* .. 

«,,„ e^^BH ar,, .t ..d .aM.O Xa.ao. art. „X nBa^a .Xno .on "oobc 

,,„„o= B .0 a.B„ ad. snlaa .BinnolXIaO lo a.a.B arU nX ..n. 

noise. ,0 ..XXBOOX- a .e.ansX.ab v.XnXa.-ao .t .aa.B.a a., to ano 

.ecnB0l«nsX= XBoXr.a.B,aoea b ear. ..ota.a* bna •..•.*n,.oo 

,OBl arl. to afiiMBec= nl a.a.. «.n6iXe„B tot XaanooB 

:3Xn.ctXXaO to s.a.B eH. nX ..nuoo a ,a.anaX=a» "oobo,,- h.ow a« . 

'"' "°^ior jr=.^::xx«B^f t^exn"::: nox'.roxx„B 

fina ,11 to woni .on bib BJnBOiiqqs « j^„ob ew 

,ri Xl.n„ .X to wan>. -.enXmaxS '*^^J^*»* ^°;"^J„,, „, „,aed 

,„. arfT ..aa. ..•-. ari. .on aX esbeXwcnM to ioaX .XriT 

a 0* -.ata, aeo6 be,a..ise-, a. o. .risuoe bno. a., .on .o ,a«.rt 

-ns.nt ..I.-.B. eri. o. won nwon:. .X .oat sXrtT ..-..nuoo to no 

-BOXXqqa art. a.oto. nwoni eaw .1 -.ari.ariw „.oXtto »X« o. bna b 

.Bri. to ..na.tcJBrinx an', o. nwon^ aaw .1 ..on .o fiaXXt saw 

..naXXeqqa eri. e.otad eXqoeq -xari.o ^b« o. vIdBdo-,q bna X^ 

e.B.a B to x.n.oo a to e»Bn art. anXad "ooboM" b.ow ariT 
,0 x.ixaool- a aa.Bnslaei. btow arl. .Bri* Wari aX .1, .noXnU a 



DA 



63,540, 34 

region of country" and it therefore has a geographical significance 
such as to bring it within the class of geographical names which 
are not registrable as trade-Marks* 

The decision of the examiner is affirmed. 



(Signed) E. B. Hoore, .^„.-. 
Acting Commissioner. 



October 22, 1901. 



01 



-^ 



^■> /*y' f^ 






t 

\ 



OOMMISSIONEE'g DECISIONS. 



-I 



SROUFE & COMPANT V. CROWN DISTILLERIES 

Company. 

Decided OctoMrlC, 1901. 

Appeal from Examiner of Interferences, 

TRADE-SIUIE FOB SPiaiTOOUS LIQUORS. 

Apiilication of John Sroufe & Companj' filed 
February 6, jfflDl, No/02,631. Application of Crown 
Distilleries Company filed September 5, 1900, No. 
61,724. 

Measrs. Dewey, Strong & Co. and Mr. T. T7. 
Fowler for Sroufe & Company. 

Mr. E. M. deary and Mr. E. W. Johnson for 
Crown Distilleries Company. 

Allen, Commissioner: 

This is an appeal by the Crown Distilleries Com- 
pany from the decision of the Examiner of Interfer- 
ences awarding priority of adoption and use of the 
trade-mark ia controver.^y to Sroufe & Company. 

The issue consists of the words "Old Govern- 
ment" for distilled and spirituous liquors. The 
evidence shows clearly, and it is not disputed on 
behalf of the Crown Distilleries Company, that 
Sroufe & Company were the first to use the marK 
"Old Government." It is urged, however, that 
this use was merely as agents for a particular lo- 
cality and not as the owners of the mark. In other 
words, the contention seems to be that some other 
person or company, not identified, was the owner 
of the mark and permitted Sroufe & Company to 
sell their goods so marked as their agents in San 
Francisco. 

It is also urged that Sroufe & Company cannot 
be considered the owners of the mark for the fur- 
ther reason that they made an assignment of their 
rights to AVilliam Wolff & Company before they 
filed their application here involved. 

These questions relating to ownership are, how- I 
ever, collateral matters, having no direct bearing ' 
upon the question of priority which is now pre- 
sented for decision. Sroufe & Company having 
actually used the mark in their trade long before 
the Crown Distilleries Company adopted it, it is 
clear that the Crown Distilleries Company cannot 
properly be held to be prior in right. The con- 
tention that Si-oufe & Company acted as mere 
agents and the contention that they have assigned 
to William Wolff & Company each in effect con- 
stitutes an admission that the right tp the mark 
belongs to some one other than the Crown Distil- 
leries Company— viz., William Wolff & Company 
or the parties for whom Sroufe k Company acted 
as agents. Such right by thu-d parties would be 
as much a bar against this appellant as against 
Sroule & Company, and therefore there would be 
no more reason in deciding in its favor because of 
Buch bar than in deciding in favor of Sroufe & 

Company. Sroufe & Company being the first of 
these parties in possession of the mark, it must be 
held that they are entitled. to the decision on 
priority, leaving the question of their ownership 

and right to the mark for cv parte consideration 

after the interference is settled. 



7^.^>^, //>^ 



It is said that Sroufe & Company have \Tsed the 
mark on whisky and on no other liquor, and it is 
argued that since the issue covers distilled and 
spirituous liquors generally they have not proved 
the issue. Whisky is undoubtedly a distilled and- 
spirituous liquor, and the use of the mark upon it 
complies with the broad terms of the issue, and it 
was not necessary for Sroufe &" Company to show 
use on all spirituous liquors. The (Jrown Distil- 
leries Company has not shown use on all distilled 
and spirituous liquors any more than Sroufe & 
Company. The use by Sroufe & Company of the 
mark on whisky is sufficient to prevent the regis- 
tration of the mark to one subsequent for distilled 
liquors broadly, as set forth in the issue. 

In then- application for registration Sroufe & 
Company do not specify the particular spirituous 
liquors to which the mark has been applied; but 
if this is a defect in their application it is one which 
may be corrected by amendment. It is an ex parte 
matter which cannot warrant a decision against 
them upon the broad issue in view of their evidence 
of prior use. The Crown Distilleries Company al- 
leges in its application an appropriation of the 
mark for "spirituous liquors" broadly, although 
it describes the particular goods to which it has 
been applied as whisky and brandy. 

If this appellant was of the opinion that the is- . 
sue was indefinite and too broad and that Sroufe 
& Company were not entitled to registration ujjon 
the statements made in their application, a motion 
to dissolve the interference should have been made. 
These questions are not pertinent to the (luestion 
of priority, which is the only one now presented. 

This appeal must be disposed of upon the issue 
a 8 drawn and accepted by the pai-ties, and it is 
neither necessary nor proper to make rulings upon 
the rights of the parties as to luatters other than 
the issue. Whether the Crown Distilleries Com- 
pany is entitled to register the mark in issue for 
brandy in spite of the use by Sroufe & Company 
shown by the evidence is a matter for the determi- 
nation of the Examiner of Trad§ Marks in case an 
application for such registration is made. 

The attention of the Examiner of Trade-Marks 
is called to the evidence on the question of owner- 
ship of the mark by Sroufe &' Company, and in 
case he conclude" therefrom that they are not the 
owners he should reject their application. This 
is a matter, however, with which ^he Crown Dis- 
tilleries Company has no concern. 

The decision of the Examiner of Interferences 
awarding priority of adoption and use of the mark 
in issue to Sroufe & Company is affirmed, 




'1 







7 ^^'..2^<f^' 



COMMISSIONEE'S . DECISIONS, 

j Oeeided November S9, woi 

I 1. Tbade-Mabk — " Delta " — A 

oHiPBicAL Words. ^^^kakt Significance _ Seo- 

gan n^unty to Texi'^T/of^^^^^^^^ °'" county in Michi- 
vahdtrade-markforhardtvare sinLr"^ small towns, is a 
as a letter of the Greek a phabe Ms ,n Z'"''"''^''^ ^'^°'fl«^°<=e 
paphical meaning that it cannot h! '"P"''""- '° '*= g«o- 

lealword. "°"^ '^^''^'dered a geograph- 

2. S^i^Mese Geographioai, Words 

3. Same-Same 

: ^"-^^?rSS'tr:t:T---egistra. 
courts to rule, broadly, that a wL *' intention of the 

merely because it happens to bTusedTT' '" ^ '^ade-mark 
or looauty. '^'^ ^ *"« "^^^ '« designate some town 

4. Same— Name op Towk no r 

TBAar SiGNmcA.,^. ^°^^^-^ords HAvm« Arbi. 
Where words which aro ,■„ „ • 
- awell-deflned meamnHrve berriTo" '^' ^ ^"-^"^ ^^ ^-« 

some town or locality, i-eW that « "'^"^ ^^ ^^^^ °aine of 

to geographical wordL, and the ' .Tr'°°"'''^^''^<='^°«od 
stood in their original enselhe r 3'^ a™ commonly iinder- 
remote that it may ^e digregaXf ^"" ' '"^'=*' "^^S'^S is sq 
APPBAI. from Examiner of Trade-M^fe,, 

TBADE-MAKK FOR HARDWARE 

^'■•^•^•^^^'•fortheappUcant. 

Allen, Commissioner 

.round that it is ,eo!^lJ^L^-<^^-e -P- the 

wo^rd'^er^fSLltfT^^r^^^^ 
j a county in Texas and „f "^'^'^t^ i^ Michigan, 

For this reason he re'frds "Z"'"''' T^"" *°^- 
' cane greater t^:::^.^^^^^^:^^^^- 

, ; 0--XThe1u?^r ?oS-^? '- ^--- (- 

' '^^^^lX%liZni^^,~^r. use as designating locaUty, 
i„,ff*f referring to Cmial Co. v. C'?a,.^ nq W tt" 

sylvaniaTas* heSlSirandt ^tf^ °^ ^^'^'^- 
3i^ilar character the court s^fd'' °*^" "^''^ °' ^ 

mSd\llr-g|frof ^i'e^- --- cann;t be appropriated and ' 

eoSLria;^ :rj:s;:i*^« ^*"^^ --^ 

than their ffeoffranhJ^i '*®^°^'^ meamng other 

^ore...,f:s£rio^rTi^rstmrtor^- 

if the word had anv^^f' •^^''•' ^<59') since 

an Indian nSn or trS^ "'"""^ ^* "^« ^^^^ °f 



i 



It IS not believed to have been the mtention of 
the courts to rule, broadly, that a word could not 
be a trade-mark merely because it happened to be 
used to designate some town or locaUty. Many 
words which are in common use and which in 
such use have awell-deflned and well-understood 
HJeanmg have been used as the name of some town 
or- eyen county, but it is not believed that they are 
thereby changed to geographical words. They 
are commonly understood in then- original sense, 
and their geographical sense is so remote that it 
maybe disregarded. This may be illustrated by ' 
the words "Star"and "Liberty." Suchwordswill 
be given by the purchasmg public their arbitrary 
sigmflcanceas applied to articles of sale, and they 
wiU therefore triUy and properly indicate origin 
or ownership, ■ ' ''■■?•.• ' 

f he word ''Delta " in the present case is beheved 
to be oae of that class. It is the nameof one of 
the letters of the Greek alphabet, and it is believed 
that such significance for it is so far superior to any 
geographical mes^nuig. which it may have that it 
mayprop^Iy-be looked upon as an arbitrary sym- 
bol when applied to merchandise. It is not a mere 
geographical word. Tlie applicant in this case is 
not doing business at auy place bearing the name 
ot l>elta. _ The word was adopted because of its 

fanciful significs.uce and would be so understood 
oy^puijehasers. 

The dedisibii of the Examiner of Trade-Marks is 
reversed. 



V 



p^ 



fX^.fJ^^^ 



COMMISSIONER'S DEOISIONS, 



Ex PARTE MALONEY AND CALDWELI/, 
Decided November 15, tSOl. 
On appeal. 

TRADE-MARK FOR NON-ALCOHOUO BEVKRAGKS. 

Application filed August 17, 1901, No. 63,993. 

Mr. E. Laass for the applicant. 

looRE, Assistant Commissioner: 
This is an appeal from the action of the Exam- 
liner of Trade-Marks refusing to register as a trade- 
Imark for non-alcoholic brewed beer the word 
'Hoxie." 
Registration has been refused by the Examiner 
Ion the ground that the word " Hoxie " is an ordl^ 
nary surname under the authority of the decision 
of the Supreme Court in The Brown Chemical Co. 
V. Meyer et al. (55 O. G., 387) and of the decisions 
of this Office in ex parte Capital Paper Comjmny, 
I'll O. G., 161G,) ex parte The Philadelphia Lawn 
Mower Company, (72 MS. Dec, 51,) and ex parte 
The Esterirook Steel Pen Manufacturing Com- 
pany, (72 MS. Dec, 163.) 

It is well settled that an ordinary surname can- 
not be registered as a technical trade-mark, and 
the reason for this, as stated in the decision in eai 
iiarte The Estabrook Steel Pen Mamifacturing 
Company, supra, is that such names are not sus- 
ceptible of appropriation by any one individual, 
firm, or corporation — 

to the exclusion of all other individuals, firms or corporations 
of the same name who may legitimately' carry on the same busi- 
ness and who have a right to use their name in a lawful way 
upon their goods. 

It may well be that certain words, to some of 
I which applicant has called attention, which are 
used as surnames have also other meanings, and 
this other meaning of such a word may be such 
as to warrant its registration as a technical trade- 
mark. 

The word "Hoxie, "however, does not appear to 
have any meaning apart from its significance as a 
.surname, so that, under the well-settled practice 
announced in the decisions above cited, registra- 
tion .was fiiroperly refused. 

The action of the Examiner of Trade-Marks is 
rmed, 



OOMMISSIOUEB'S DEOISIOUS- 

»'■ « 

Ex PARTE KINGAN AND COMPANT, LIMITED. 

Decided November M, mU 
On appeal. 

TRADE-MARK FOR LARD AND MEATS. 

Application filed July 5, 1901, No. 63,723. 

Mr. Chester Bradford and Mr. Ernest W. Brad' 
ford for the applicant. 
Moore. Assistant Commissioner: 

This is an appeal from the action of the Exam- 
iner refusing to register as a trade-mark for lard 
and meats a mark which is shown as the represen- 
tation of a maple-leaf having printed thereon the 
words "Maple Leaf Lard." It is stated that the 
essential feature of the mark is the words "Maple 

Leaf." * -It 

Registration is refused on the trade -marks of 
T R Jenkins and Son, No. 5,964. May 5, 1878, and 
Swift and Company, No. 24,513, April 10, 1894. 
The mark of T. R. Jenkins and Son comprises the , 
representation of aleafbearingthe words "Family J 

Lard." 

It is urged in behalf of applicant that the repre- 
sentation of A lAaple-leaf is iiotafi essential feature i 
of his m'ark and that there is no resemblance be- 
tween the words "Maple Leaf," which eohStxtute \ 
the essential feature of his mark, and the marks 
shown in the references. He states, further, that 
the mark is used just as it is shown-*, e., with the 
leaf and the words thereon. This being the case 
it cannot be said that the leaf is not an essential 

f 6£ltlir6 .... 

. TheessentiaUeaU-reof a t-^^^ie-.i^rfe is not tlmt j^hich^h^ 
registrant elects to designate as such, but ttat wmcn wo^^^^^ 
strike the public mind as its most salient feature, lii* pm 
Metropolitan Watch Company, 44 MS. Dec, are.) 

I am of the opinion that the mark shown in the 
present application so nearly resembles that of 
T R Jenkins and Son as to cause confusion or mis- 
take in the mind of the pubUc, and for this reason 
it should not be registered. 

If in its entirety or its essential features it (the trade-mark) is 

vtann and Blache, 84 O. G., Ho.) 

The action of the Exaniiner of Trade-Mavks is 



ip;->,>-^>fa 



w 



j Ex PARTE Bowles. 

Decided November HI, 1301, 
! On appeal. 

PRINT FOE LIFE-MSUBANCE POLICIES. 

I Application of Thomas H. Bowles filed July 39, 
-'J1901, No. 1,870. 

Messrs. Benedict & Morsell for the applicant. 

i^ooRB, Assistant Commissioner: 

This is an appeal from the action of the Exam- 
iner refusing to register a print to be used for ad- 
krertising purposes for life-insurance policies, the 
ptle of which is: "The Company which has made 
Policies of Life Insurance Famous throughout the 
World" foe-l^MBMnaDee-poi^iea 

The word " print" as used in section 3 of the act 

of June 18, 1874, is interpreted by the Ofiice to 

mean — 

an artistic representation or intellectual production not borne 
by an article of manufacture or vendible coiflinodity, but in 
some fashion pertaining thereto such, for instance, as an adver- 
tisement thereof. 

Registration has been refused in the present case 
for the reason that life-insurance policies are not 
articles of manufacture referred to in section 3 of 
the copyright act in that they are not merehan- , 
dise capable of being bought and sold and for the 
further reason that the print is an advertisement 
of the life-insurance business and not of the poUcy 
itself. 

The second ground for refusing registration does 
appear to be tenable in view of the fact that in the . 
appUoation for such registration it is distinctly 
stated that the print is " to be used for advertising . 
purposes for life-insurance pohcies." 

As to the first ground, however, it must be de- 
termined whether or not a policy of Ufe insurance 
is such an article of manufacture as is contem- 
plated by the statute relating to the registration 
,of copyrights. Such articles of manufacture are 
defined by the Ofla.ce to be- 
all vendible commodities produced by hand, machinery or- art.. 

The word " vendible " indicates that by "com- 
modities" is to be understood commodities in a 
commercial sense. So used, this word means-^ 

any movable and tangible thing that is produced or used as the 
subject of barter and sale. (American and English Enoy. of 
J^aw, Vol. 5, p. 830,) 

Clearly a policy of life insurance is not such an 
article as is here defined. Policies are contracts 
entered into between the companies and the as- 
sured. They are not manufactured and kept on 
hand for sale by the companies. In order to ren ••. 
der them complete and effective, they require, like, 
other personal contracts between parties, thet?,. 
signatures and the transfer of the consideration. 
Nor when they have been completed by the par- 
ties thereto do they become commodities subject 
to barter and sale or, as expressed in the statute, 
3,rticles of manufacture. In Rex v. Wheeler (3 B. 
and Aid., 349) it is stated: 

The word manufacture has been generally understood to de- 
note either a thing made which is useful for its own sake as 
°iJS * * S or to mean an engine or some part of an engme 
or tastrument, to be employed either in the making of some pre- 
?ioull ™taowi article or in some other useful purpose. 

A policy of insurance is not such a thing. It de- 
rives its value and effect from the performance of 
the mutual promises made by the parties thereto.. 
It has no value in itself. It may be rendered y(^^_ 
and of no effect by failure of the parties to keep, 
the promises made therein. Moreover, it is not; 
vendible. Under certain conditions it may be as- 
signed- but this power of assignment is luniteA. 
fi-eaerally by statute. As was sta,ted te tlift SW- 
nrewe Court of the United States in Paui v, Yin 
oinia, &J¥^ll-> 168.) 

rrL=I ^tracts aie cot articles of commerce In any proper 

These contracts ^ They are not subjects of trade andWer 

Xr"edrthtmSets|so^ethinghavmga^^ 



In view of the above consideration of the nature 

of hfe-msuranee policies it must be held that they 

are not articles of manufacture for which a prini 

:„may be registered under the statute relating, ta 

copyrights. ^ ^ ^ 

The action of the Examiner is affirmed. 



^ 



"^ 




ndent of the parties to them. 



They ai'9 not commodities 
~ ' atPi t.n another, and then 



i 



/'-a^ f<ia^ .. 






TINITJ'HD STATES PATETIT OTTICE. 



Ex parte Valier and Spies Milling Company. 



MS.D. Vol. 72, Page Sll. 



Trade-MarX for Plour. 



Appeal, 



Application filed September 16, 1901; No. 64,141. 



Mr. Chas, Valier for the Valier and Spies Milling Company. 



This is an appeal from the action of the Examiner of Trade- 
MarKs, refusing to register the word "DAINTY" as a trade-mark for 
wheat flour. 

Registration has been refused on the ground that this word is 
descriptive of the quality of the goods for the reason that among 
other meanings this word signifies "pleasing to the palate; tooth- 
some; delicious; as dainty food", or, as stated by the Examiner 
in other words, "dainty flour". 

It may be that when applied to articles of food which are pre- 
pared from wheat flour the word dainty \?ould be descriptive of a 
quality of such food, but I am of the opinion that it cannot be 
considered as descriptive of the composition or qualities of the 
flour ;from which they are made, nor of the direct result produced 



•■a 
1 



i 






by its use. As stated in the decision in ex parte PeeX, 96 O.G,, 
425, •» 

"Where the primary object, purpose, and effect of a raarX are 
to indicate origin or ovmership of the goods. Held that the fact 
that It remotely suggests some advantage which may be derived 
from the use of the goods should not prevent its registration." 

The decision of the Examiner of Trade-MarKs is reversed. 

(Signed) E. B. Moore, 

Assistant Commissioner, 



November 18, 1901. 



;4Hii"- .•>■'-« 



mi^^/fgr^'^mm^mimm 



BF^ 



V 1^ 



UNITED STATES PATENT OPPICE» 



'' ' ^. 



Ex parte Weir Pottery Company , 
MS, D., Vol. 72, p. 310. 



Trade-Mark 



Application filed April 13, 1901, No, 63,13§, 



This is an appeal" from the action of the Examiner of 
Trade-Mark* refusing to register the word *Weir* as a trade-mark 
for pottery. 

The word "Weir" is the salient feature of the applicant** 
najrae^ and is not registrable. 

The decision of the examiner of trade-marks is affirmed. 



(Signed) P, I, Allenjv 

Commissi oner a 



NoYember 16, 1901. 




229 ^ 




2-^ 



?^ 



aOKSffSSTONEE'S DEOISION'fe. 




Ex PARTE GrBOSSMITH. 
Decided December 9, 1901. 
Trade-Marks— Asticipatios—"Florodora'' and ''Florideka.'' 
The word ;'Florodora" refused registration in view of tlie 
prior registered mark " Floridena." 

. Ox appeal. 

TliADE-STARK FOR PERFUMES, PEEFOMED SOAP, TOILET ARTICLES, ETC. 

Application of John t. drossmitli for reglslrfl- 
tion filed July 30, 1901, No. 03,814. 

Messrs. J. E. Evans-Jackson d- Co. and Messrs. 
Richards <& Cb. for liie applicant, 

Allen, Commissioner: 

This is&n appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the word 
" Florodora" as a trade-mark for perfumes. 

Registration was refused on reference to the prior 
registered mark " Floridena " for the same class of 
goods. The similarity between the words is so 
close that it is believed that the ordinary purchaser 
AVould be deceived and induced to purchase the 
goods of one party supposing them to be the goods 
of the other. There is certainly a likelihood of 
confusion in the minds of the purchasing public 
between the marks. 

The decision of the Examiner of Trade-Marks is 
alliniied. 





>o\j 



Nov, 13, 1901, 



UNITED STATES PATENT OFFICE. 



^ 






Ex parte The Linder Shoe Company* 
MS, D. Vol, 72, Page 310, 



Trade-Mark for Boots andShoei, 



Appeal , 



Application filed May 17, 190l4> No, 63,402, 



Tfr, C, P, Eelt for applicant. 



I 



This is an appeal from the action of the Examiner of 
Trade-Mark* refusing to register the word "PEERLESS" as a trade- 
mark for shoes. 

Registration has been refused beoause the word "Peerless;" 
is descriptiTe of quality and also because it so elosely resembles 
the known trade-mark of Kenny and MePortlant, 6j843p November 26^ 
1878, for shoes, which mark consists of the word* "Peerless Sastil^ 
Ian." 

The word now sought to be registered is clearly descrip- 
tive of quality and yrhen used in connection with shoe*, would imply 
that such shoe* were superior in quality to others. Such a word 
cannot be appropriated by any one as a technical trade«i5ark and 
registration of this very word has been repeatedly refused by the 
off iceo See ex parte Peerless Carbon Black Company Limited, 81 0, 
Go, 80 3 a 

The fact that the words "Peerless Castilian" have already 
been registered as a trade-mark for the same class of goods is also 
a rAC*o'i for refusing registration in this case. See the de©^ion 
In ex pa»-^ Meriwether, 83 0, Go, 1613. 

The action of the Examiner of Trade-Marks is affirmed. 
November 1«, l90l. (Signed) E, B, Moore, Acting Commissioner^ 





^'Sl. 



Ex PARTK The Miami Clothing Manufactur- 
ing Company. 

Decided December 23, 1901. 

1 . Trade-Mahks— Descriptive— ' ' Fullcut. " 

" Fullcut " as a trade-mark for clothing refused registration 
on the ground that it is descriptive, since it would convey to 
the purchasing public a definite idea of the style of the clotliing. 

2. Same — Same — Printing in Script. 

Merely printing a mark otherwise not registrable in script 
with a flourish beneath it does not render it registrable. 

On appeal. 

TRADE-MARK FOR CLOTHING. 

Application filed July 31, 1901, No. 63,890. 

Mr. R. J. McCarty and Mr. D. P. Wolhaupter for 
the applicant. 
Allen, Commissioner: 

I This is an apjjeal from the decision of the Exam- 
iner of Trade-Marks refusing to register for over- 
alls and shirts a marli the essential feature of 
which is said to be— 

the word ^-Fullcut" printed in facsimile of handwriting with 
the heavily-shaded flourish continued from the last letter be- 
neath the word, and the word " Brand '' printed on the tail of the 
flourish. 

The ground of refusal is that the mark is de- 
scriptive of the merchandise upon -which it is used 
and that the style in which it is printed does not 
render it so arbitrary and distinctive as to entitle 
the applicant to its exclusive use. 

There is no doubt in my mind that the word 
"Fidlcut" would convey to the purchasing public 
a definite idea of the style of the clothing upon 
which it is used. The term ' ' full cut " is an expres- 
sion well known as applied to clothing to distin- 
guish it from that which is close-fitting and is de- 
scrijjtive of this quality. No one can be adjudged 
to have the exclusive right to such terms of de- 
scription. 

Merely printing a mark otherwise not registra- " 
ble in script witli a flourish beneath it does not 
render it registrable. This is a common way of 
printing words and liiarks and is aot suflH.cient to 
lend distinctiveness to a particular mark. The es- 
sential feature which is impressed upon the pur^ 
chaser and upon which the mark must stand or 
fall is the word which is printed and not the style 
of the printing. 

The decision of the Examiner of Trade-Marks is 
affirmed. - 



filCT- 



I '* 



:i32 




w- 



'*•■•■ 



1 




«J^0hiiii!;i-< 



/d (P. ^. A ^ Z^-' 



COMMISSIONEK'^ DECISIONS, 



Ex pIUt^ TnAvjiii 

Hecided December 17, 1901. 
TrtuDE-MiAtfs— Descriptive— " Db. Hoffmann's Drops." 

"Dr. Hoffmanirs Drops" retuseil registration as a trade- 
tUark for medicine, since "Hoffmann " is an ordinary surname 
ftild "Drops" is descriptive. 

On appeal. 

TRADE-MARK FOR CHOLERA, ETC., REUEDV. 

Application of Frank Traudt filed March 14, 1899, 
No. 07,924. 

Messrs. Higdon & Longan for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
" Dr. Hoffmann's Drops " as a trade-mark for medi- 
cine. 

The word "Drops" is a term ordinarily used to 
describe medicines of certain kinds, and therefore 
it is clearly descriptive. It cannot alone consti- 
tute a valid trade-mark and is not rendered regis- 
trable by being associated with words which are 
not themselves registrable. The word ' ' Hoffmann " 
is a common surname and with the prefix "Dr;" 
indicates that the medicine originated with some 
physician by the name of Hoffmann. There is 
nothing fanciful or arbitrary about the mark as a 
whole, and therefore it was properly refused regis- 
tration. 

The decision of the Examiner of Trade-Mark? i? 
affirmeci. 






-' ^.J 



er 



/^^- 




COMMISSIONER'S DEOISIOITS. 



Ex PARTE 'WOOLWORTH. 

Decided December Jl, ISOI. 
Trade-Marks— Descriptive— "Nevees-Tick." 

" Nevers-Tick " as a trade-mark for lubricants refaseil reg- 
istration upon the ground that it is descriptive. 

On appeal. 

TRADE-UARK FOR LUBBICANT., 

Application of Leland G. Woolvjprth for regis- 
tration filed March 15, 1900, No. 60,767. 
Mr. James, J. Sheehy for the applicant. 

AiiLEN, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the word 
" Nevers-Tick" as a trade-mark for lubricants for 
machinery, drawer-slides, and the like. 

Sticky is the antithesis of slippery, and to say 
that a -labricant does not stick is to describe in 
an ordinary way a quality or characteristic of it. 
Being a lubricant, it is of course intended to be 
slippery and not sticky, and no one is entitled to 
the exclusive right to say th^t a lubricant sold by 
him does not stick or never sticks. Such descrip- 
tive words cannot be taken to indicate to the pur- 
chaser origin or ownership of the goods. 

This appellant has adopted a form for writing 
the descriptive words which differs in some re- 
spects from the ordinary; but the differences are 
not sufficient to destroy the identity of the words. 
They would be understood when read or pro- 
nounced in the same ws-y as if written in the ordi' 
nary manner. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



■e 6j,me'wai 



The decls 




cJ' 





'^H^? 



bPoP^ 



Decem'ber 5, 1901, 

UNITED STATES PATENT OFFICE. 



Ex parte McKinney Bread Company, 

i 



72 MS.D. , 500. 



Trade-Mark for Bread, Calce, etc. 



Appeal from Examiner of Trade-MarXs, 



Application for registration filed October IS, 1899; No, 59, 656 < 



Messrs. Higdon & Longan for applicant. 






This is an appeal from the decision of the examiner of trade- 
marks refusing to register as a trade-mark for bread, cakes, pies 
and crackers - 

"a three-quarter view pictorial representation of the bust of 
an elderly woman wearing a sun-bonnet and glasses and holding in 
both hands a bread-pan in which are located two loaves of bread 
which appear to be stuck or adhered together. " 

Registration was refused on the ground that the mark so 
closely resembles the prior registered mark No. S3, 248, for the 
same class of goods, as to cause confusion in the mind of the 
public. The registered mark includes a picture of an old woman 
wearing glasses and holding a pan containing a loaf of bread, but 
here the resemblance to this appellant's mark ceases. The pic- 
tures are not the same, and it is believed that taken with the 
other features of the marks which are not alike there is suffi- 
cient difference between them to warrant the registration. 

The decision of the examiner of trade-marks is reversed," 

(Signed) F. I. Allen, 

Gorninissione 
December SO, 1901, 




1 



iCyOV>' 




/d^Z^, . /I 



COMMISSIONEE'S DECISIONS, 



1/ 



Ex PARTE Parker, Holme;* & Cojipany. 

Vecidei. January S, lOOS. 
1. Trade-Mark— " WArKWELL " FOR Shoes— Not Descriptive. 
Tlie word " Waukwell "as a traJe-mark for shoes Held reg- 
istrable, siQce it is not descriptive of the shoes. 
S. Same— Anticipation— " Waukwell ''—" Walkeasy." 

Held that the trade-mark " Waukwell " is not anticipated by 
the prior marks "Walkeasy" and "Walk-a-way" tor the 
Bame class o£ goods, sincejpurchasers exercSiing ordinary care 
would not confuse the marks and be misled. 

On appeal. 

trade-mark for footwear, etc. 

Application for registration filed March 11, 1901,, 
No. 03,873. 

Messrs. Macleod, Calver & Randall for the ap- 
plicant. 
^^LLEN, Commissioner: \ 

T^iis is an appeal from the decision of the Ex- i 
aininer of Trade-Marks refusing to register the i 
word " Waukwell" as a trade-mark for footwear. \ 

Registration was refused on the ground that the i 
mark is descriptive and also on the ground that it ! 
so nearly resembles prior registered marks as to 
cause confusion in the minds of purchasers. The j 
prior marks are "Walkeasy" and "Walk-a-way," ; 
applied to the same class of merchandise. | 

it is believed that "Waukwell" differs from 
"Walkeasy "to such an extent that a piirchasfei;' 
desiring the goods of one party and using the ordi- 
nary care which is to be expected of him in his 
efforts to obtain those goods would not be con- 
fused' by the two marks and take the goods of one 
supposing them to be those of the other. The i 
registr£ttion of " Walkeasy " therefore does not pre- 
vent the subsequent registration of "Waukwell." 
" Walk-£t-way " differs still more from the appli- 
cant's mark than does "Walkeasy." 

The ^f6Td "Waukwell" as applied to shoes may 

by somfe persons be construed as moaning that one 

wearing these shoes will walk well, and that this' 

will be accomplished lly means of the shoes, and 

...^uird that thus "Waukwell " is descriptive of shoes. 

This view, however, excludes other reasons 
equally probable to explain the quality of the 
walk. This may result from many causes, among 
which Weather, health, and clothing might be 
enumerated, and to apply all this inference to the 
shoes in order to find the term descriptive of them 
is thought to be unwarranted. 

The decision of the Examiner of Trade-Marks is' 
feverse'J.'i ,, 



'<,k 



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«P"iW' np.i I \ y^ 




4' 



♦ 



i 



•,-J4:i/i\,''> 



■-^ 'LJ 




Ay ^' w 



V 



In the natter o-^ t.ho <■ rarte-may/'. r t^ntF^rat loTt of Rarnon 
OruRell?\R, i236^r>j>, ('..Tied M^iroh in, XPOl. 

It appearr. that t.v-fs f^rpl.-i.o'int var* h reiniient rjf Havaj^a, ^Juba, 
nnd •ippli.e.l for trni«-narK regiRtratioti, allagir.g rjonmnroe 'betv;«on 
Cuba and the United f?tates, and potitlonod the Gorardsfiioner of 
Patentn to srant the Hpp?.ioation» "upor. tho aBmraption that tho 
privileges granted to AraRrican oitijsenB \in lor Military Order 
No. If?, proteotinr; t^^eir intorests iji Otiba, Bhould 1ms the groimds 
for granti)Tg Ritnilar privileges to (Albans, even though no legal 
status «r treaty stipulation hai? as y«t defined such rights, 
A liberal inteTrpretation of the proviRlons of The Aot of OongresR 
might bring thera )mder the head of thOBft countries where, treaty 
Gtipulationo being rr yet inpoRf?ible, they acquire the rights, 
beoaiise of tho proraulgation of Military Orders above referred to," 

The OoininiHf?loner said: 

•Upon carefully conBldoring this matter, I am ino lined to 
interpret the HtatutoB liberally, aw requoRttJd by the petitioner, 
and to per-.Tilt tliifj applioatlon to be r«*ooivod and oonsidered. 

•♦The rriquerit ±h thereaTorc gri'anted." 

(nignod) 0. H. ])^ioll, 

Ooi>itilB?;ioner, 
January 10, 1001. 
Recorded Vol. vo, P-tge f)Ol. 




40 




' 'W'c^ ^^^^ 



COMMISSIONER'S DECISIONS, 



Ex PARTE Classic Corset Company. 

Decided Jamiary 17, 100!. 
Trade-Mark— "Grecun"— Geographical ok Descriptive. 
Held that the *ord " Grecian " should not be registered as 
a trade-mark, since it either conveys the idea tliat the articles 
to which it is applied c^me from Greece and is therefore geo- 
graphicalor that they are made in the Grecian style and is 
tlierafore descriptive. 

On appeal. 

TRADE-MARK FOR rORSETS, ETC. 

Application filed .Tuly 12, 1901, No. 63,701. 

Mi:. Clareiiee K. Chamberlain ior the £|,pp^lieapt 
Allen, Commissioner: 

This is, J^n appeal from tlie action of the Exam- 
iner of Trade-Marks refusing to register as a trade- 
mark for bust - girdles and athletic and neglige 
corsets the word "Grecian." 

Without doubt the word "Grecian" in its pri- 
mary significance means "of or pertaining to 
Greece." (See Century Dictionary.^ That is, the 
primary^ signification of the word is geographicf 1. 
If this -syere its only meaning, it would undera prac-" 
tice wljiph, is well settled be unregistrable as a 
trade-ifJ3.fk. (Ex parte Rome Textile Company., 
91 O. G., 830; ex parte Manogue-Pidgeon Iron 
Coiv^pany, 97 O, G., 2084.) 

In, add.iliipnto its primary geographical meaning 
this -word i? u^ed frequently in a descriptive sense 
to signify "characteristics of the Greeks, resem- 
bMng v^hat ia Gi^reek." Thus we may speak of Gre- 
cian architecture, meaning architecture in the 
Greek style, Greek or Grecian fire, Greek cross. 
In these cases, as in others similar thereto, the 
word "Grecian" is used not in a geographical 
sense, bu,t as descriptive of the kind of architec- 
ture, fire, cross, or of whatever the subject maybe. 
This descriptive significance of the word is not fan- 
ciful or arbitrary, however. It is a significance 
which conveys to the mind some characteristic or 
quality of the subject or article to which the word 
is applied. In fact, it may he said that this word 
has no fanciful or arbitrary significance. As ap- 
plied to a bust-girdle, then, this word if used in any 
other than a geographical meaning must describe 
some characteristic or quality of the girdle as be- 
ing Uke those worn by the Greeks; otherwise it is 
deceptive, and a purchaser thinking to obtain such 
a girdle would be misled. 

That words descriptive of character or quaUty of 
an article are not registrable as trade-marks is too 
well settled to admit of discussion. (See ex parte 
Birkhead, 97 0. G., 749; ex parte The Crescent 
Manufacturing Company, 97 0. G., 750.) 

Viewed from any standpoint the word ' ' Grecian " 
fails to satisfy the requirements laid down as nec- 
essary for a registrable trade-mark. Eegistration, 
therefore, was properly refused. 

The decision of the Examiner of Trade-Marks is 
aflBrmed. 



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"7 



COMMISBIONEE'S DECISIONS. 



/* 



^gfl^^^r 



Ex PARTE John Dkwab & Soi^s, Limited. 

Decided January iS, WOS. 

1 . Label— Use of a Person's Name Without His Consent— Pi'b- 
Lio Policy. 
Where a label is pre.sentecl includiu!; as its most prominenl 
feature tlie wcinls " iviug Edward VII," ffcWtliat registration 
should be refused upon the ground of public policy, which di 'hs 
not sanction the use of a person's name for purposes of trade 
without his consent. 
•;. Sajie— Same— Use for Commkrcial Purposes— Publtc Man. 
Descriptions and publications giving information in regard 
to a public man cannot be suppressed upon the ground of a 
right of privacy upon his part: but the use of his name for 
commercial purjjoses in advertisement of goods offered fur 
sale stands upon a different footing. 
■). Same— Same— Property Kioht. 

If a person's name has any commercial value as applied to 
goods offered for sale, he alone is entitled to the benefits, and 
it is a property riglit which no one else has the right to usurp 
without his consent. 
1. Same— Same— Labels Used for Purposes of Trade. 

Prints and labels, although registered under the copyright 
law, are for purposes of trade, and the use of a person's name 
as the most prominent feature thereof without his consent is 
no more permissible than its use as a trademark. 

• ' "' i 

On appeal. I 

LABEL FOR WHISKY. 

Application for registration filed November 21, • 
1001. 

Mr. F. T. F. Johnson for the appellants. 
Allen, Comminsioner: 

This is an appeal from the action of the Examiner 
refusing to register a label for whisky the title of 
which is " King Edward VII." The label is an ar- 
tistic production and describes the contents of the 
Ijackage to which it is to be applied as " Finest Old 
Scotch Whiskey," and therefore registration has 
not been and could not be refused upon the ground 
that it is lacking in artistic merit or that it is not 
properly descriptive. The label, however, includes 
as its most prominent feature the words, in large 
type, " King Edward VII," and the question pre- 
sented is: Should a party be permitted to makeusie 
of thatname for purposes of trade without the per- 
luissiou of the present King of England, to whom 
it refers 't 

The copyright law under which labels are regis- 
tered does not in terms vest the Commissioner of 
Patents with authority to exercise his discretion 
in regar d to the registration of prints and labels, 

but it has never been held and cannot be success- 
fully contended that he is bound to register every- 
thing which parties may present and entitle a print 
or label. The thingpresented must contain certain 
characteristics which in fact make it a valid print 
or label within the meaning of the copyright law 
as construed by the courts. Even where it comes 
within the general definitions of prints or labels it 
should not be registered where it is contrary to good 
morals. In such civse registration will i^operly be 
refused upon the broad ground of public policy, 
with reference to which all lawsmust becoiistrued. 
It must be held, therefore, that some discretion is 
left with the Commissioner of Patents in regard to 
the registration of prints and labels. 



* If the label in the in-iseut ease is to l>e refused 
registration, it mu.st be u^jon the ground of puhlic 
policy, which does not sanction an invasion of the 
privacy of an individual for purposes of trade with- 
out his consent. It is true that when a person be- 
comes so prominent in affairs of state or in busi- j 
nessasto be what is known as a "public man" he 
cannot insist upon privacy in regard to himself 
and his acts. Descriptions and publications giv- 
ing information in regard to him cannot be sup- 
pressed upon the ground of the right of privacy 
upon his part, and such publications would prob- 
ably be registered by the Librarian of Congress 
under the copyright law. The use of a public 
man's name for commercial purposes in advertise- 
ment of goods offered for sale stands upon a dif- 
ferent footing. It amounts to publicly using his 
name for private purposes of gain. If his name 
has any commercial value as applied to goods 
offered for sale, he and he alone is entitled to the 
benefits. If it has a commercial value, it is a prop- 
erty right similar in character to the good-will 
which attaches to an established business and no 
one else has the right to usurp it without his con- 
sent. If that value arises from the fact that he is 
engaged in selling goods of a certain character to 
the public, there are many decisions of the courts 
to the effect that he will be protected against the 
use of his name by others for that purpose, and it 
would seem that in so far as his right to protection 
is concerned it is not of consequence by what means 
the commercial value became attached to his name. 
Whatever value there is is his. 
Commissioner Duell said in e.v parte Mcliineruajj 
. (85 O. G., 148) in reference to the word "Dewey" as 
a trade-mark: 

I cannot, however, refrain from e.\pressing the opinion that 
even if it be registrable, no one has tlie right without the con- 
sent of Dewey to appropriate it as a trade-mark. A living celeb- 
rity is entitled to protection from the ordinary trader. 

There are other decisions relating to trade-marks 
to the same effect. 

The present application is for a label under the 
copyright law and not for a trade-mark; but under 
the express provisions of the law prints and labels 



which are registered in this Office are for purposes 
of trade. They pertain to articles of manufacture 
which are to be sold to the public. The use of a 
person's name as an essential feature of such a label 
^ is ob,ieetionable for the same reasons as is its use 
" as a trade-mark. The article of trade upon which 
the present label is used would undoubtedly be- 
come known as " King Edward VII Whiskey," for 
that is the most prominent feature of the label. It 
is against public policy to sanction such use of a 
person's name without his consent. 
The decision of the BxainiD«r is affirmed. 




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S DECISIONS 



Ex PARTE Diamond Ink Company. 

Decided Fehruaru 7, 190S. 

1. Trade-Marks— Anticipatiok—Faosimilks— Statement of Es- 

sential Featube. 
Where the facsimile of an applicant's trade-mark and the 
facsimile of a prior registered marl;: are so similar as to cause 
confusion in the trade between them, BeU that registration 
should be refused notwithstanding the fact that the parties 
refer to different parts o£ the mark as constituting the essen- 
tial features. 

2. Same— Essential Features. 

The essential features of a trade-mark in use are those pM- 
dominent and controlling features which would be impressed 
upon the minds of purchasers and by which they would re. 
member and identify the mark, and a statement of essential 
features in the application merely calls attention to those 
features without in any case changing that which in fact con- 
stitutes the mark. 

3. Same — Same— Statement Should Include All. 

Since the rule requires a statement of the essential features 
of the mark, the Office should exercise care in requiring a 
statement of all of those features of the mark shown which 
are in fact essential. 

4. Same— LiMiTmo Registration to Featitrbs Desibed— Show- 

ing. 
If a party's registration is intended to be limited to certain 
features which have been separately used as a trade-mark, he 
should show only those features. 

On appeal. 

TRADE-MARK FOR INKS AND WBITIUa PLDIDS. 

Application for registration filed May 30, 1901, 
No. 63,434. ' 

Mr. H. ff. Underwood for the applicant. 

Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register as a trade- 
mark for inks a mark the essential feature of which 
is said to be " the conventional representation of a 
diamond or lozenge shaped figure." 

It is stated in the description that — 

this trade-mark has generally been arranged as shown in the 
acGompanying/acsn?ii7e, wherein the word "Diamond" is shown 
in ornamental capitalletters with the diamond-shaped figure 
below — 

but that "the -word ' Diamond' may be omitted." 
Registration was refused in view of a prior mark 
registered by the Thaddeus Davids Company, No. ) 
31,333, February 8, 1898, the facsimile of which 
consists of a diamond-shaped figure and the words 
" Black Diamond." The registrant states that the 
diamond-shaped figure may be omitted and that 
the essential feature of the mark consists of the 
words "Black Diamond." 

The question for determination is: Are the marks 
so similar a» w l?e likely to cause confusion in the 
trad'%.' 



Considering the /^-^-^^-^^f^JS tts 
doubtedlysuch similarity. . ^^Z, ^^^^^^ks can be 
the question, ^^^^ZZL^^^^TesSrZtscl.vns \ 

registrant claims as essential. It is possi ] 

state, that. it. mark u »•««, "™°°f„„ld.eenitb»t 

ESsrt°rr=^riSt;^ 

iav. been s.p«.t«ly f^ " » S.slSSgo! 
,S ^m.to ba™ be.. •«"«»*"'T?'f'i*^n 

oi purchasers and by which they ^^^/^ remember 
t^SrrerX?al/^--t- 

anyeasehavethe efEect of f «^.„^^bether 

infactconstitutesthemark. ^Jiequestio 

„ f<.<.+nrp is essential is one of fact, as is aiso 

:j:r :f b„ .t . - -j-niT« t 
;'s2;tr-rdS^be P»----i:i 

a- „o+v,ornlereauii-es a statement ottneesbfiii' 
Smce the rule ^61^-"'' should exercise care j 

features of th« mark, the Office shoui ^^ , 

in requiring a statemen^ ^^f^^^.f essential. In 

the mark ^l^"^'^' ^^'"^^^^^TOamond " is undoubt- 
the present case the word ^'^f "''f^ ._„ „£ ti^e 

It xs l^'f^''l.*^^*J^^;V3^,'e cS'nfusion registration 
are so ^^"^f^.^^^^^atud the action of the Exam- 
' rrrrrlI-£L\%l.ereforeamrined. 




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OOMMISSIONEE'g DEOISIONS. 
B. A. CoHBiif & Son Company «. Mixleb Kottt 

HBPP, GiESK AND COMPACT ' 
Decided February 8. 19og 
' ^•^^^— ^--™ «, F.0^BKPKKS..X..X0X or 

■'^N:v:rsC-ratr:r'""'t°' ^" —^tte words 

of an owl With Z^rL'^oZsl'^^ "^ ^"^ "PP^'P*^' 

I ow, and thatl^re is an il^ri^^L'^r" °' ^'^ " *« 

^itr^ii^T/orsrsorrr'^''-- 

flew that shoes for metSn ande Jr'"^""'*'''"*'-- 
related. women, and children are so closely 

■.s!e\U^^frnre:^:f "rfr T; -sITo^H,^ the 
good., and whatrr^ut^St^fn^tt ;" ."'^ ^"^ '''^ "^ 
aecidedfromtheappho^^^siSrhltrorftcr^ 

Appeal on motion. 

TRADE-MAKE FOB SHOES. 

AppHcation of B. A. Corbin & Son Comoanv filp^ 
July 23, 1901, No. 03,823. Trade-markTo 34^02 

Compfny^- '^^^^'•^f-^MUIer.-Kohlhepp, Gieseand 
Allen, Commissioner: 

mer of Trade-Marks denying amotion by MiC 
Kohlliepp, Giese and Company to dissolv^ t^' 
above-entitled interference *^ ^ "* '^''^^^ *li' 

9 'P^ : f. "ite'^ference in fact exists. 

dec wtn r.^^ w'^ ''"''' ^'•^g'^arity in the 
aecJaration of the interference as to preclude a 

proper determinationof the question of priority 
isteJS ^*^;^"^«^?« ^^ declared between the L- 
istered trade-mark of Miller, Kohlhepp, Giese lid 
Company, consistmg, as shown, of thf^eSe enta 

'' WrSrlE^^*^^^^ '^^^''^' -"'^t^-o^ 

ters "M K r f ? ^T^^^^ ^^°^^ ^* ^'^'^ *!»« let- 
ters ju. K. G. & Co." below it, and the mark of th» 

SThe%!n^- ^r.^'^ * '"^ ComplSTcoiS! 
M^tof th/h^H f*^"'*''"' *^"^^^'^ ^°d upper 
part of the body of an owl arranged within a dm, 
blecn-cle, with the words " Owl sLe"beWp«n ^h 
That t? outer cu:cles and below the hfaT"*''' 
for tt ^^ registered trade-mark and the mark 
for which registration is sought are so siSS 
appearance that the public would be dec^^d tf 
the two marks were appUed to the same c Ls o1 
goods cannot be questioned. (See the decS to 

3085.) Registrants Umit the use of then- mark t'A 
shoes for ladies and children, whUeapph'aXeek 

irfotthr"'^^ '"-^ ^- «^- ^'-th:^^^ 




In view of their specific statements as to the kind 
of goods to which the marks are to be applied it is 
urged by applicants that there is no iaterference 
in fact— 

h^Sss+Be two marte are different and furthermore the spe- 
^erent ®°° claimed by the respective parties Eire djf- 

The question raised by the first of these reasons 
is disposed of above. As to the second reason it 
may be said that in general the same question is 
presented as When the question of infringement is 
to be considered— that is, wUl the public be de- 
ceived? Are the classes of goods so closely related 
that when bearing the same mark one would sup- 
pose that they are the product of the same manu- 
facturer? In the present case these questions must 
be answered in the affirmative. Undoubtedly any 
one seeing the trade-mark consisting, essentially, 
9f »n owl applied to men's, women's, and children's 
fetioes would suppose them to be the product of the 
same maker. " If one of these classes of shoes is 
found to be of special excellence, the same degree 
of exceUence wiU be looked for ia the others. It 
must be held, therefore, that the classes of goods 
to, which the trade-marks now under considera- 
ticn Are ajjplied are the same. There is thei'efc're 
an interference in fact between these marks. 

The second ground for the motion for dissolution 
is that there has been irregularity in the declara- 
tion — 

^^^5'„^''*S'i'ff''y consisted in making the issue broader than 
the claims of the respective parties. 

The issue is stated by the Examiner to be "the 
representation of an owl for shoes." 

As to this second ground for the motion it may 
be said that the strict rules which are followed in 
interferences between applications for patents are 
not whoQy appUcable to intBrfer(=nees between 
tJ:ade-maf ks. Thus the issue in the former case 
must be limited to what is claimed by the respec- 
tive parties, while in the latter case it must com- 
prise the essential features of the mark as applied 
to the same class of goods. What the essential, 
features are is not to be decided from applicants* 
statement thereof, but from an inspection of the 
Inarks, to determine " that which would strike the 
public mind as its most essential featui'e." {.S^!C 
parte Kingan and Company, Limited, supra, 
and the cases cited therein.) So, also, of the classes 
of goods to which the mark is applied, the question 
whether or not different specific articles are of the 
same class is a question of fact to be determined 
in each case as poipted out above. 

In the present case, since the essential feature of 
the two marks, the representation of an owl, is the 
fSiUe and since the class of goods to which they 
are applied is the same, it is held that there wa-s 
no irregularity in declaring the interference. 

The decision of the Examiner of Trade-Marks is 
affirmed. 




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COMMISSIONER'S DECISIONS. 



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Ex PARTE Baldwin. 

Decided February U, tSOt. 

On appeal. 

LABEL FOR MEDICINE. 

AppUcation of 0. N. Baldwin filed December 24, 
1901, No. 3,330. 
Mr. 0. N. Baldwin pro se. 

Allbn, Commissioner: 

This is an appeal from the action of tbe Exam- 
iner refusing to register a certain label consisting" 
of the title " Ayres Medicinal Wonder" and print- 
ed matter descriptive of the medicine, with direc- 
tions for its use. The said printed matter is sur- 
rounded by an ordinary printed border. 

Rfegistration is sought under section 4953 of the 
Revised Statutes relating to copyrights. This sec- 
tion is in part as follows: 

Sec. 4953. The author, inventor, designer, or proprietor of any 
book, map, chart, dramatic or musical composition, engraving, 
cut, print, or photograph or negative thereof, or of a paintmg, 
drawing, chromo, statue, statuary, and of models or designs 
intended to be perfected as works of the fine arts, and the exec- 
utors, administrators, or assigns of any such person shall, upon 
complying with the provisions of this chapter, have the sole lib- 
erty of printing, reprinting, publishing, completing, copying, 
executing, flnisning, and vending the same; and, in the case of 
a dramatic composition, of publicly performing or representing 
■| it, or causing it to be performed or represented by others. * * * 
^ In the construction of this act the words '-engraving," "cut," 
■and "print" shall be apphed only to pictorial illustrations or 
Vorks connected with the fine arts, and no prints or labels de- 
signed to be used for any other articles of manufacture shall be ] 
entered under the copyright lavf, but may be registered in the 
Patent Offloe. 

The statute under ^fhicit copyrights are granted | 
has reference only to such writings or discoveries , 
as are the result of intellectual labor, (Higgins v. 
Keuffel, 55 O. Gr., 1139,) or, as was^held in Trade- . 
Mark Cases, (100 U. S., 83,) it includes such original h 
designs for engravings, prints, etc., as are founded y 
in the creative powers of the mind. Such designs 
for engravings, prints, etc. , when used in connec- 1 
tion with the fine arts are the proper subjects of 
copyrights ; but, as provided by the section of the 
istatute qtioted above, prints or labels which are 
designed to be used for any other articles of manu- 
facture may be registered only in the Patent Office. 
In so providing for a separate place for registra- 
tion of prints or labels to be used in connection 
with ai"ticles of manufacture the law does not 
change the requirements, as interpreted by the Su- 
preme Court, to which such prints or labels must 
conform — that is, they must be original, the re- 
sult of intellectual labor founded on the creative 
powers of the mind. 

The label now under consideration is not such a 

one. ' It required no exercise of the creative powers 

! the mind to write the proper directions for the 

ie of the medicine described in this label, nor is 

ky originality shown in- the design thereof. It is 

mply an example of the ordinary' sldll of the type- 

stter, and as such is not the subject for registra- 

on. ' (See ex parte Mahn, 83 0. Gr., 1310; ex parte 

New England Gas and Coke Company, 90 O. Gr., 

1365. <> 

The decision of the Examiner is affirmed. 




y 



OOMMISSIONEE'S DEOIBIONS. 



Ex PARTE HUENBFELD. 
Decided February Sh, 190t. 



-ARBiniAinr SiaKmcAKCE-GEOaRAPH 



TttAOB-MAaK— ' ' Sblma 

T^:woTd°"e'una," although the name of a town In A^- 

arbitrary and fanciful m view of its classical oiigiu 
ZmuL Christian name and would not m any case be 
given a geographical significance. 



ON appeal. 

TRADE-MAEK FOB WASHING-BACHIHES. 

Application of Ernst H. Huenefeld filed Decem- 
ber 4, 1901, No. 64,618. 
Mr. Henry A. Seymour for the appUcant. 

AiiEN, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the wora 
"Sehua" as a trade-mark for washing-maeh^nes. 

Registration h^s been refused for the reason that 
the word ' ' Selma " is a geographical name. 

It is true that this word is the name of a town m 

the State of Alabama and of other small towns and 

vUlages throughout the country; but it is also true 

that the word is of classical_origin and has been 

used as a feminine Christian name. 

CleariivrhiS;irnlessthegeographicalsigniflcance 

of this wordis predominant its application to wash- 
ing-machines can be made only with an arbitrary 
or fanciful meaning. The geographical meaning 
of this word is not thought necessarily to follow 
its use. It is one of that class referred to as fol- 
lowsin ex parte Manogue-Pidgeon Iron Company,^ 

^ *i§^S|toha.eb^n the in^ntton^^^^ 




Sirev\^/?h\rtS'e^y are^X-elTcV/nleTto geog/aphical words. 

It is beUeved that this word used as a distm- 
Kuishing mark upon washing-machines would be 
accepted bvthe purchasers of such machmes as 
arbitrary and fanciful and would not in any case 
be given a geographical significance. S^f ^f^^" 
Olusion receives special support from the fact that 
appellant's goods are manufactured at Cincinnati, 
Ohio, and not at Sehna, Ala. , nor at any other place 
by that name. The word "Selma" is therefore 
held to be registrable as a trade-mark. 
The decision of tbe Bxamiflef dt T*Hde-Marks is 



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OPIBflON OF THE ATTOENEY-GENEEAL 



Trade-Marks—Eights of Eesidents of Porto Eico, Ouba, 
and Philippine Islands to Eegister. 

Department of Justice, 
Washington, D. C, February 19, 1902. 

Sir: I have received your letter of the eleventh 
instant asking my opinion " as to the rights of resi- 
dents of the Philippine Islandsj Gw.baj and Porto, 
Rico in regard to the registration of trade- marks 
in the Uriited States, in view of the treaty of peace 
and the subsequent legislation by Congress relat- 
ing to those islands." 

The trade-mark act of Con gress of March 3, 1881, 
provides— 

that owners of trade-marks used in commerce with foreign na- 
tions or with the Indian tribes, provided such owners shall be 
domiciledin the United States or located in any foreign country 
or tribes, which, by treaty, convention, or law, affords similar 
privileges to citizens of the United States, may obtain registra- 
tion of such trade-marks by complying with the following re- 
quirements. 

In so far as residents of Porto Rico are concerned, 
laws of Congress "not locally inappHcable" have;- 
by the act for the government of that islahd ai!d( 
by Revised Statutes, section 1981, been extended 
to it. 

What laws are locally inapplicable is sometimes 
a difficult questidti! biii in. JEtornbuckle V. Tooriihs 
(18 Wall., 654) the Bupreme i^ourt says; 
to^riS!..^'^?^®,'^^^ *® effect, undoubtedly, of importing into the 
f pn»f? / ™® '^"^^ passed by Congress to prevent and punish of- 
-o against the revenue, the mail-service, and other laws of 
a general character and universal application, but not those ox 
Speeifie applieatioi*» The actof March 2, 1831, has a specific ap- 
"iflieatlon to the courts of the United States by its very terms, 
*and is not of universal application, and cannot be made to apply 
to the territorial courts under said clause of said orgame act. 

See also Commonwealth v. Knoiolton, (2 Mass., 
534;) Commissioners of Silver Bow Co. v. Davis, 
(6 Mont., 313;) Ardmore Coal Co. v. Bevil, (61 Fed. 
Rep., 759;) Territory v. Murray, (7 Mont., 261.) 

Porto Rico has been fully organized under a law 
of Congress providing the detaDs of "its governmen* 
and organized for the most part upon the plan 
adopted for the territories contiguous to the States 
of the Union. The presumption from the whole 
tenor of this organic act is that a liberal Construc- 
tion of the provision extending the laws of the 
United States would comport with the design of 
Congress. 
,. The trade-mark act, however, is confined, so far 
as our country is concerned, to owners of trade^ 
marks domicUed in the United States, and it rfta,Jj 
• fee ffjgiied that tersolis, d9miqLled, in^ Poi-to ^ipo 
are a different class and that by the tetma df tM 
act of Congress the law is inapplicable m Porto 
Rico. But it seems to me that m inquiring into the 
■ appUcabUity of a law transferred as part of a sys- 
; tern undoubtedly intended only for another coun- 
i try when passed we should pay more attention to 
substance than to words. While it is true that per- 
sons domiciled in the United States have a distinct 
8tatusassuch,itisalsotruethatthetrade-marklaw 
I is not based upon anything specific or pecuhar m 
' that status which shouldleadus to narrow its appU- 
■fjaVioKsihce ite'diialiy embraefes foreigners who are 
"■ 'not residetits at all in the United States, btlt in their 
bmi foreign countries or tribes. Nor is there any- 
thing peculiar in the relations between the Govern- 
ment of the United States and apersondomieiledio. 
the United States different from the relatiofit be-, 
tween the Government of the United States and a 
eerson domiciled in Porto Rico which should pre- 
vent usfrom regarding this law as extending to the 



■If ^^^ 
^tT zens I 



latter. The rights, privileges, and immunities of citi- 
zens as such are not involved, and, in short, there is 
no perceivable reason why Congress should make a 
distinction between residents of the United States 
and residents of Porto Rico. In addition to this 
the trade-mark act undoubtedly applied to the 
Uaitejd States in the sense of the States, the organ- 
ized Territories, and the District of Columbia and 
not in ihe sense of the States united. The law 
was, therefore broad originally and intended to 
^pply t'c Territories as well as States. To these 
brganizect Territories, Porto Rico, similarly and 
completely organized, has now been added. In ad- 
dition to these suggestions it is apparent that a law ^ 
regulating our arrangements with foreign coua*''' 
tries and referring to treaties and conventions 
upon the same subject should be treated as con- 
cerning the United States in a very broad sense. 
{Downes V. Bidwell, 183 U. S., 344.) 

I am of opinion, therefore, that residents of 
Porto Rico are entitled to register trade-marks 
under the act of Congress first referred to^' ,,. .^'-fl 

As for the PhiHppihe islands^ I do not iregard 
the.til. sk: Comifleteiy-brgahize'd territories in con- 
tempialiionof Revised Statutes, section 1981. The 
general course of governmental legislation and ac- 
tion concerning them seems to me to indicate that ^ 
Congress and the Executive have taken the sam4 
view of them, and the tradfe-maik jlctj lespebiaUy 
that part which concerns persons domiciled in the 
United States, is not a treaty or convention or 
other international act such that the phrase " the 
United States " employed in it has been regarded 
by the courts as extending to all places, however 
remote, within our dominions. Moreover, the 
phrase " United States" is converted in sections 5 
and 13 into "this country," which may well be re- 
garded as too narrow to embrace an after-acquired 
archipelago eight thousand miles across the ocean. 
I think, therefore, that the residents of the Phil- 
ippines are not, as such, entitled to the privileged 
Of the trade-mark laws 

Cuba is a foreign country, and persohg domiciled 
there are not domiciled in the United States. The 
treaties of Spain no longer apply in Cuba, and we 
have no treaty or convention with Cuba, unless 
what is known as the Piatt amendment (31 Stat. 
L., 897) may be regarded as such. That does not 
concern trade-marks. 

Cuba is at present governed by ourselves, andi 
the. law there purporting to give "similar privi- 
leges to citizens of the United States" as those 
given by our trade-mark law (General Order No. 
160) will doubtless be continued, since it is itself 
but a continuation of the arrangement made by 
our treaty with Spain. .; ■ ; ik'' 

Cuba may~ therefore be regarded as tme of the. 
countries with which we have reciprocal arrange- 
ments, and a person located there is entitled to 
register trade-marks under our law. 
Respectfully, 
I P. C. KNOX, 

j Attorney-General. 

' The Secretary of the Interior. 




/^^ <^. / fy^ 



^ 



COMMISSIONER'S DECISIONS^ 



Ex PARTE Barrett & Barrett. 

Decided February S, 1003. 
TiiADE-MAttK— "Malt Myrrh" foe Malt Liquors- 

TIVE. 

Held that " Malt Myrrh " as a trade-mark tor malt liquors is 
not registrable, since the word " Malt " is clearly desoriptiTp 
aflfl. " Myrrh " is either descriptive or deceptive. 

Ox appeal. 



-Descrip' 




TRADE-MARK FOE LIQUORS, ETC. 



1001, 



Application for registration filed August 23, 
No. 64,020. 

Mr. John R. Philp for the applicants. 
Allen, Commi.isioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
" Malt Myrrh " as a trade-mark for malt liquors or 
beverages. 

The word "Malt" is undoubtedly descriptive of 
the goods upon which it is used, and "Myrrh" is a 
descriptive word which would convey the impres- 
sion that the beverage contained myrrh. Sinca 
the applicant states that the beverage does not in 
fact contain myrrh, this word applied to it is de- 
ceptive. 

Registration was properly refused for the reason 
that the mark is partly descriptive and partly de- 
ceptive. 

The decision of the Examiner of Trade-Marks is 
afiSrmed. 



■rv^. 







24: 



OOMMISSIONEE'S DEOISIONS. 



Ex PARTE Hall. 

Decided February S7, 190S. 
1. Trade-Mabk— Essential Features. ^^ 

The essential features of a ti-ade-m^^^re to be determined 
from an Inspection thereof. Those flHres which upon in- 
spection would he impressed upon thB^inds of purchasers 
and by which they would remember and identify the marks 
are the essential features. (Citing ex parte Diamond Ink Co 
68 0. G„ 1483.) 

S. Same— Same. 

The mere fact that an applicant may choose to state that a 
certain feature is the essential feature does not make it in fact .. 
the only essential feature. 

3. Same — Same — Statement of. 

A statement which omits reference to certain features of the 
mark which are in fact essential is defective, since it seeks to 
cover something different from the mark which is in actual 
use, as shown by the facsimile. 

4. Same— Generic Trade-Mark EEGifrrRATioN. 

The statute does not provide for the registration of a generic 
trade-mark— one embracing something more than has been 
used and more than applicant is entitled to use. 

On appeal. 

trade-kabk'fok paints. 
Application of William A. Hall filed August 13, 
1901, No. 63,969. 

Mr, Hknry Calver for the applicant. 
Allbn, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refupuig to register as a trade- 
mark fer paints a mark described as follows: 

My trade-mark consists of a lozenge-shaped figure, preferably 
with serrated edges, and which figure forms a ba ekground sur- 
rounding a trade-mark word which is preferably the word "In- 
durine;" the letters of said word being largest in the middle and 
reduced toward either end of said word. This lozenge-shaped 
background is preferably printed iu black with the letters of the 
trade-mark word in white, in contrast thereto: but other colors 
may be employed, or other trade-mark words than the word 
"Indurine " might appear on the lozenge-shaped figure without 
materially altering tne character of my trade-mark. 

The essential feature of this mark is said to b&— ^ 

the lozenge-shaped figure and a trade-mark word thereon of a 
color contrasting with the background of the said figure and the 
letters of which word are largest in the middle of said figure and 
are reduced in size toward both ends thereof. 

Appellant has already registered the mark shown 
in the facsimile. In this registration the essential 
feature of the mark is said to be the word "Indu- 
rine. " He now seeks to register the lozenge-shaped 
figure w4th any word thereon, with the limitation 
that the color of the word shall contrast with the 
color of the background and the letters of the 
word shall be largest in the middle and reduced in 
size toward the ends thereof. 

As above noted, the drawing of this appUeation 
shows in facsimile the mark as it is actually used, 
and this facsimile shows that the mark consists of 
the word ' ' Indurine " arranged on a lozenge-shaped 
background, as above described. 

The word "Indurine " therefore is as prominent 
a feature of this mark as the lozenge-shaped back- 
ground, and it cannot be successfully maintained 
that this word is not an essential feature of the 
mark. The essential features of a mark are to be 
determiroa from an inspection thereof. Those 
tesltures which upon inspection would be im- 
pf essed upon the minds of purchasers and by which 
they woiiid remember ahd identify the marks are 
the essential features. (See ex parte Diamond InJi 
Company, 98 O. G., 1483.) The mere fact that an 
appUcant may choose to state that a certain fea- 
ture is the essential feature does not make it in 
fact the only essential feature. 



In the case now unae.- consideration the state- 
ment of essential features is defective, because it 
l^^^^p^ seeks to cover somethmg d-'fferent frc-u the mark 

which is shown and which is the ane used by ap- 
pellant To this end it omits reference to the word 
Indurine" as an essential feature and mcludes 
merely a trade-mark word of a color contrastmg 

withthebackgroundofthelozenge-shapedflgure- 
that is, it seeks to cover something different from 
the mark which is in actual use, as shown by the 
facsimile. 
There is no provision m law for such a registra- 
^ tion. The statute of 1881 provides— 

■ ■ forlign natlL'rorTIJa^n°Lrs^-r?l"-i'n--S''r^e"lis^^ 
Office * * *'"■=*) "y ■'=?."='°e to be recSd fn TheTa'S; 
Ss thereof. ^ '^^'="1"'°° °£ t^e trade-mark itselffwith fec- 

i This section of the statute eleariy means that the ' 

I mark which is shown and described m the regis- 
tration must be the same as the mark which is 
actually used. It does not provide for the regis- 
tration of a mark not in actual use or which differs 
from that in actual use. 

To grant the registration now sought would be 
In effect to grant a registration for marks which 
are not shown and which have not been used in. 
the way contemplated by the statute. It would' 
grant registration for a generic trade-mark— one 
embracmg something more than has been used and 
more than apphcant is entitled to use. Such a 
mark as is covered by this application is devoid of 
those Indicia which must be borne by tl;e symbols 
known to commerce and jurisprudence as trade- 
marks. Such symbols must have invariability. 
They must be fixed, positive, unmistakable. (See 
Browne on Trade-Marks, sec. 148.) To grant such- 
registration would clearly be Ulegal. 

The decision of the Examiner of Trade-Marks 
was eofreet, and it is accordingly afarmed. 




_...i 




: /^ 



COMMISSIONER'S DECISIONS. 



?? 



Decided February 1.?, 190i. 

1, Trade-Mark—" Sdccess "— Arbitrary and Fancifitl Word. 

HeW that the word "Success" as a trade-mark for stoves 
and ranges is registrahle, since it does not describe any qual- 
ity or characteristic of the articles and would be understood 
by purchasers as arbitrary and fanciful. 

2. Same— Defii^it;c|Ji op Descriptivk Words. 

The prohibition against the registration of descriptive words 
as trade-marks applies only to those words which state or de- 
fine some quality or characteristic of the article or designate 
its class, grade, style, or quality or the ingredients of which it 
is composed. 

On appeal. 

TR.4.DE-MAttK FOR COOKING AND HEATING APPAR.ITDS. 

Application of Ernst H. IJuoijefelfi Jiled Novem- 
ber 28, 1900, No. 63,301. 
Mr. H. 4- Seymour for t^jifi aijplieapt. 

Allen, Commissioner: 

TUis is an appeal ttom tfie decision of the Exam- 
iner of Trade-Marks refusing to register the -word 
" Success" as a trade-mark for stoves, ranges, fur- 
naces, ovens, and heating-drums, exclusive of gas- 
stoves. 

Registration has been refused on the ground that 
the word is a descriptive word used in a descrip- 
tive sense. 

The law is well settled that words which are 
" merely descriptive of an article of trade, of its 
qualities, ingredients, or charaateristics " are net 
registrable as technical trade-marks. {Canal Com- 
pany V. Clark, 13 "^,7a!l., 811; Lawrence llanufac- 
turing Com2)any v. Tennessee Manufacturing 
Company, 138 U. S., 537.) Ths prchibition ap- 
plies only to those words which state or define seme 
quality or characteristic of the articl? or designate 
its class, grade, style, or quality or the ingredients 
of which it is compcsed. 

'ihe word "Success" cannct be sail to describe 
any quality or characteristio of stoves. It iriay 
suggest that the staves will operate as they are in- 
tended to; buisas vwa said in ex parte Peck, (OG 
O. G., 425-.) 

" ■''* It cannot be held to be one of those desi i five terms 
which any persr>n has tlie rijfht t*) use in describin., similar ar- 
ticles and which therefore cannot be exclusively appropriated 
by one person. The mark would be recognized'by purchasers 
as being arbitrary and fanciful. 

The decision of the Examiner of Trada-Maf 'cs is 
reversed. 





m 





"■'»' 




1 & 



OPINION or THE ATTOENEY-GENERAL, 



Trade-Mai'ks — Eights of Eesidents of Porto Eico, Ouba, 
and Philippine Islands to Eegister. 

1. Trade-Mark Law— Construction of the Words "United 
States." 
The trade-mark law regulating our arrangements witli for- 
eign countries and referring to treaties and conventtons upon 
the same subject should be liberally construed and treated as 
concerning the United States in a very broad sense and as in- 
cluding not only the States, but all organized Territories. 
3. Same— Residents of Porto Eico— Kioht to Registration. 
Porto Rico lias been added to the other Territories similarly 
and completely organized, and therefore residents thereof are 
entitled to register trade-marks in this country. 

3. Same— Residents of Coba— Eight to Registration- Treaty 

Relations. 
Cuba is a foreign country and persons domiciled there are 
not domiciled in the United States within the meaning of the 
trade-mark law; but that country is now governed by our- 
selves and laws have been passed there giving to citizens of 
the United States privileges in regard to trade-marks similar 
to those given here. Held, therefore, that residents of Cuba 
may register trade-marks in this country. 

4. Same— Residents op Philippine Islands— Not Domiciled ih 

the United States— No Treaty Relations. 
The Philippine Islands are not a part of the United States or 
completely-organized Territories within the meaning of sec- 
tion 1981 of the Revised Statutes, and the legislation and 
Executive ordei-s relating to them cannot be considered a 
treaty or convention within the meaning of the trade-mark 
law. Held, therefore, that residents of the PhlUppines are 
not entitled to register trade-marks in this country. 

Department op Justice, 
Washington, D. C, February 19, 1903. 

V-iu: I have received your letter of the eleventh 
instant asking my opinion " as to the rights of resi- 
dents of the Philippine Islands, Cuba, and Porto 
Rice in regard to the registration of trade-marks 
in the United States, in view of the treaty of peace i 
and the subsequent legislation by Congress relat- | 
inf to those islands." 

The trade-mark act of Congress of March 3, 1881, 
provides — 

that o^s-ners of trade-marks used in commerce with foreign na- 
tions or with the Indian tribes, provided such owners shall be | 
domiciled in the United States or located in any foreign country 
or tribes, which, by treaty, convention, or law, affords similar 
privileges to citizens of the United States, may obtain registra- 
tion of such trade-marks by complying with the following re- 
quirements. 

In so far as residents of Porto Rico are concerned, 
laws of Congress "not locally inapplicable" have, 
by the act for the government of that island and 
by Revised Statutes, section 1981, been extended 
to it. 

What laws are locally inapplicable is sometimes 
a difiBcult question; but in Hornhuukle v. Toombs 
(18 Wall., 054) the Supreme Court says: 

That clause has the effect, undoubtedly, of importing into the 
territory the laws passed by Congress to prevent and punish of- 
fenses against the revenue, the mail-service, and other laws of 
a general character and universal application, but not those of 
specific application. The act of March 8, 1831, has a specific ap- 
plication to the courts of the United States by its very terms, 
and is notof universal application, and cannot be made to apply 
to the territorial courts under said clause of said organic act. 

See also Co^nmonwealth v. Knoiolton, (2 Mass., 
534;) Commissioners of Silver Bow Co. v. Davis, 
(6 Mont., 313;) Ardmore Coal Co. v. Bevil, (01 Fed. 
Rep., 759;) Territory v. Murray, (7 Mont., 261.) 

Porto Rico has been fully organized under a law 
of Congress providing the details of its government 
and organized for the most part upon the plan 
a'doptedi for the territories contiguous to the States 
of the Union. The presumption ftom the whole 
tenor of this organic act is that a liberal construc- 
tion of the provision extending the laws of the 
United States would comport with the design of 
Congress. 




The trade-mark act, however, is confined, so far 
as our country is concerned, to owners of trade- 
marks domicOed in the United States, and it may 
be argued that persons domiciled in Porto Rico 
are a different class and that by the terms of the 
act of Congress the law is inappUcable in Porto 
Rico. But it seems to me that in inquiring into the 
applicability of a law transferred as part of a sys- 
tem undoiibtedly intended only for another coun- 
try when passed we should pay more attention to 
substance than to words. While it is true that per- 
sons domiciled in the United States have a distinct 
status as such, it is also true that the trade-mark law 
is aot based upon anything specific or peculiar in 
that status which should lead us to narrow its appli- 
cation, since it equally embraces foreigners who are 
not residents at all in thfe United States, but in their 
own foreign countries or tribes. Nor is there any- 
ttilhg peculiar in the relations between the Govern- 
ment of the United States and a person domiciled in 
the United States different from the relations be- 
tween the Government of the United States and a 
person domiciled in Porto Rico which should pre- 
vent us from regarding this law as extending to the 
latter. The rights, privileges, and immunities of citi- 
zens as such are not involved, and, in short, there is 
Ho perceivable reason why Congress should make a 
distinction between residents of the United States 
and residents of Porto Rico. In addition to tliis 
the trade-mark act undoubtedly applied to the 
United States in the sense of the States, the organ- 
ized Territories, and the District of Columbia and 
not in the sense of the States united. The law 
was therefore broad originally and intended to 
apply to Territories as well as States. To these 
organized Territories, Porto Rico, similarly and 
completely organized, has now been added. In ad- 
dition to these suggestionsit is apparent that a law 
regulating our arrangements with foreign coun- 
ties and referring to treaties and conventions 
lippn the same subject should be treated as con- 
cerning the United States in a very broad sense. 
(Bownes v. Bidwell, 182 U. S., 344.) 

I am of opinion, therefore, that residents of 
Porto Rico are entitled to register trade-marks 
under the act of Congress first referred to. 

As for the Philippine Islands, I do not regard 
them as completely-organized territories in con- 
templation of Revised Statutes, section 1981. The 
general course of governmental legislation and ac- 
tion concerning them seems to me to indicate that 
Congress and the Executive have taken the same 
view of them, and the trade-mark act, especially 
that part which concerns persons domiciled in the 
United States, is not a treaty or convention or 
other international act such that the phrase " the. 
United States " employed in it has been regarded 
by the courts as extending to all places, however 



■*-y> 





mmtmrn. 



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Wr^ 



•^ 



/<:^^ 



9 



z.^f'j. 



Ex l^-ARTB KENYON. 
Decided February .?,'„ 190S. 
Thade-Mark—"CatarrhA1i Jelly"— Not Registrable. 

"' fhe words ''Catar*al Jelly " is a trade-mark for a jelly-like 
remedy (or caiarrh Held descriptive aud not registrable. 

Ojsr appeal. 

TRADE-MARK FOR MEDICAL REMEDIES. 

Application of Thomas N. Kenyon filed Novem- 
ber 21, 1901, No. G4,516. 
• Mr. Frederick S.Lyon for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam^ 
iner of Ti-£ide-Marks refusing to register the words 
" Catarrhal Jelly" as a trade-markfor remedies for 
catarrh and other diseases of the nose, throat, and 
lungs. 

The words for which registration is sought are 
clearly descriptive of a remedy for catarrh, which 
i-emedy is of a jelly-like character. Any one pur- 
bhasing this article to which these words are ap- 
plied would expect to get a remedy of such chart 
aeter. These words are therefore descriptive and 
hot fanciful or arbitrary. They do not serve to 
indicate the origin or ownership of the remedy, for 
any one would have the right to apply the same 
descriptive terms to a similar article. 

It is well settled that words which are descrip- 
tive of the character, quality, or ingredients are 
not to be registered as technical trade-marks. 

' The decision of the Examiner of Trade-Marks ii* 
correct, and it is accordingly afHrined. 




1 



M 





OOMMISSIONEE'S DEOISIONS. 



\ 




^x PARTE Circle Manufacturing Company. 

Decided March 11, 190S. 
Trade-Mark— Use a Prereqoisite for Registration. 

The law provides for the registration ot trade-marks which 
have been actually used in commerce with foreign nations or 
with Indian tribes, and such actual use is a prerequisite for 
registration. 
2. Same— Essential Featohe. 

A party may not change that which in fact constitutes his 
mark by a mere statement that one feature is essential and 
another is not, when in fact both are essential and together 
constitute what would from inspection be impressed upon the 
mind as the mark. 
■8. Same— Showing op. 

H a party Jias used one feature separately as a trade-tnark 
"and wishes protection upon it as such, he should not show it id 
connection with other arbitrary features which would in- 
evitably be associated with it in the mind ot the person inspect- 
ing it. 

On appeal, 

TRADE-MARE FOB DRE3SIKG AND POUSH. 

Application of Circle Manufacturing Compaliy 
filed December 30, 1901, No. 64,717. 
Mr. E. G. Siggers for the applicants. 

Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register a mark, 
which is described in the statement of essentiaf 
feature as the word "Circle " or the representation 
of a circle. 

The drawing, which shows a facsimile of the 
mark as used, discloses two concentric circles with 
the words "Circle Polish" in the space between 
them and in the field within the inner circle the 
letters " C P " arranged in the form of a monogram. 

The Examiner has refused registration because, 
.. in his opinion, the mark as shown cannot be said 
to be an alternative mark consisting of the word 
" Circle " or the representation of a circle. 

The law provides for the registration of trade- 
Jaarks which have been actually used in commerce 
With foreign nations or with Indian tribeSj and 
such actual use is a prerequisite for registration. 
(U.S., ex rel. South Carolina, v. Seymour, 06 O. Q., 
1167.) There is no provision for the registration of 
a mark not in actual use or which differs from that 
in actual use. 

To enable the Commissioner to carry out the in-- 
tent of Congress in the registration of trade-marks, 
certain rules to be observed by applicants have 
been established, among them one requiring in the 
application a discrimination between the essential 
^,nd non-essential features of the mark. (Rule 316.) 
It is not the intent of this rule to permit a party to 
change that which in fact constitutes his mark by 
A ijlere statetneht that one feature is essential and 
another is not, when in fact both are essential and 
together constitute what would from inspection be 
impressed upon the mind as the mark. If a party 
has used one feature separately as a trade-mark 
and wishes protection upon it as such, he should 
not show it in connection with other arbitrjiry fea- 
tures which Would inevitably be associated with it 
In the mind of the person inspecting it. The show- 
ing of such other matter which is not intended to 
be a part of the mark upon which protection is de- 
Bifed merely leads to confusion. It is the purpose 
of the trade-mark rules to have certainty in the 
registration, and this OiBce should not permit a 
party to introduce confusion by attempts to define 



its scope. The scope of the mark -- 
j ttdicial decision, and attempts to define it by what 
amounts to broad claims similar to those in a pat-' 
mt will fcertainly lead to confusion. The f uiietioii 
of the statement of essential features is to call at- 
tention — 

to those predominant and controlling features which would be 
Impressed on theminds'of purchasers and by which they wouia 
femember and identify the marks. (Ex parte Diamond Ink 
Co., 98 O. a, U83.) 

What these essential features are is not io be de- 
termined from apphcants' statement thereof, but 
from an inspection of the mark itself as it is usedi 
If on such inspection certain arbitrary and dis- 
tinctive features appear which would be impressed 
upon the minds of purchasers, these features must 
be essential and should be included in the state- 
ment which is requu-ed by the rule. 

In the case now under consideration the concen- 
tric circles-and- the monogram are clearly arbitrary 
and distmctive features of the mai'k and are dS 
prominent as the word "Circle" contained thereifl. 
These features therefore should all be included in 
the stfitement of essential features. There is no 
Sowing that applicants use a mark which differs 
from that shown, and it is not allowable under one 
registration to embrace marks which are not shown 
and which have not been used in the way contem- 
plated by the statute. (Ex parte Hall, 98 O. G., 
3174.) Apphcants on their showing have not used 
the word "Circle" alone nor the representation 
of a eu-cle alone. Then- use has been of the mark 
Shown in the facsimile, including all the essential 
features thereof. These features should therefore 
be included in the statement. 

The decision of the Examiner of Trade-Marks re- 
fusing registration is affirmed. 




.i^ z 



COMMieSIONEE'S DECISIONS, 



1 iSx PARTE Bali,, 

I Bedded, March is, 1002. 

I. Print— fesQinsiTE for. 

It is necessary that the gdods ih. feonnection with which a 
print is used be identified in some way in the print. 
•R. Sams— ttNlTBD States Flag. 

It is contrary to public policy to detract in any way from the 
honor which is due to the flag. This result certainly follows 
from its use as an advertisement in trade. Such use is not to 
be aided or encouraged by this OfSce. 
3. Same — Currency of the United States. 

The simulation of the currency of the United States is ex- 
pressly forbidden by the statute. (Sec. 5430, B. S.) The fact 
that a print for which registration is sought contains such 
simulation is of itself sufBcieut to prevent its registration. 

On appeal. 

PRINT FOR BOOKS. 

Application of John Sanford Ball filed February 
3, 1903, No. 3,475, 

Mr. Ball pro se. 
Alieit, Commissioner: 

This is an appeal from the action of the Exam- 
iner refusing to register a print— 

i ?^ J^"?^?*! *°'" advertising purposes for a book publication bound 
"tablet form, m decorating and displaying the departmentsof 
I the same and to appear in connectionwith advertisements of the 
I worn: from time totimeih hewspapers. 

J The print for which registration is sought is 'afl 
artistic production entitled "White Eagle Refor- 
/■Snation." It comprises simulations of the flag and 
! seal of the United States and of a row of gold coins, 
a row of silver coins, and a row of greenback cur- 
rency. The copies of the print, however, do not 
contain anything which is descriptive of "a book 
publication bound in tablet form" or of any other 
article of manufacture — that is, there is nothing 
whatever about the print to indicate that it is in 
"iny way connected with an article of manufacture. 

tt is Well settled that a label must identify the 
"rtiole upon which it is used, {ex parte Mahn, 83 
u, Gr., 1310; ex parte American Weavers Protective 
Association, 94 0. G., 586,) and the same is true of 
a print, which differs from a label in that the lat- 
ter is attached to the goods in connection with 
which it is used, while the former is not so at- 
tached. In both cases, however, it is necessary 
that the goods be identifled in some way. 

This lack of identiflcation of the goods is alone a 
sufficient reason for refusing registration; wut an 
additional reason for this refusal is found in the 
fact that the print comprises, as above noted, simu- 
lations of the flag, seal, and currency of the United 
States. It is contrary to public policy to detract 
in any way from the honor which is due to the 
flag. This result certainly follows from its use as 
an advertisement in trade, and such use is not to 
be aided or encouraged by this Office. Further- 
more, the simulation of the currency of the United 
States is expressly forbidden by the statutes. (See 
sec. 5430, R. S.) The fact that the print for which 
registration is sought contains such simulations is 
of itself sufficient to prevent its registration. 

^he decision of the Examiner is affirmed. 










J 



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1 0- 



OOMMISSIONEE'S DEOISIONS.' 



I 



Ex PASTE CRO-WN DiSTII/lERTES COHPATnT. 

Decided March 10, 190S. 

1. Trade-Mabks— Eeqistration— Same Class op Goods. 

After a trade-mark has been registered tor goods ot a cer- 
tain particular description no otlier person can register or use 
the same or substantially the same mark on goods ot the same 
class as those described in the registration wheij such use 
would result in the deception of the publjc in)ihe purchase of 
the goods. 

2. Same— Meaning of the Word " Class." 

In the statute relating to the registration of trade-marks the 
word "class" means that genus which includes as species 
such Roods as if exposed to the purchasing public side by side 
with the "particular" goods to which the trade-mark has been 
applied will result in the deception mentioned in section 8 of 
the statute, and the public, misled by the application of a sin- 
gle title to the various " particular " goods, will conclude that 
they have originated from the same source. 

3. Same— Whisky and FamT-BRANDT— Goods op Same Class. ■ 

Meld that although between fruit-brandy and whisky there 
are certain well-recognized distinctions, yet they are both 
comprised in the class of distilled spirituous liquors, and that 
the purchasing public seeing both with the same trade-mark 
would conclude that they were produced by the same maker. 

4. Same— The Words "Old Government" for Fhoit-Brandy— 

Registration Refused. 
The words "Old Government" refused registration as a 
trade-mark for fruit-brandy in view of the prior registration 
of the s^me wqrds as a trade-iuark for whisky. 

Oif appeal, 

trade-mark por spiRrruous liqcors. 

Application filed September 5, 1900, No. 61,731. 

Mr. Edward M. Cleary and Mr. S. W. Johnson 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the words 
'Old Government" as a trade-mark for fruit- 
brandy. 

The Examiner has refuged registratipn In vieyr 
or the registered trade-mark to John Sroufe and 
( 'ouipany. No. 37,507, December 34, 1901, which con- 
.s! ; vs of the words ' ' Old Government " as applied to 
distilled and spirituous liquors. 

it appears from the record that this application 
was involved in an interference with the applica- 
tion on which the above-named registration to John 
8roufe and Company was granted and that prior- 
ity was awarded to the latter, althougfl^ the evi- 
dence showed that they had used the ifl£^rk gii, 
whisky, but not on fruit-brandy. 

In view of these facts it is contended on behalf 
of the Crown DistilUeries Company that registra- 
tion should be granted to them for these words 
when used on fruit-brandy for the reason, as they 
allege, that fruit-brandy and whisky are not gpod^ 
of the same descriptive properties; that since 
Sroufe and Company have not used the mark on, 
fruit-brandy they are not entitled so to use it, and 
that the registration by them of the words " 016, 
Government" for distilled and spirituous liquors 
should not prevent the registration by others of 
the same words for such distilled and spirituous 
liquors as have not been made by Sroufe and Com- 
pany. 



The act of 1881, uMBf ^Rich tfade-maikii are 
registered, provides that registration may be ob- 
tained— 

First. By causing to be cecorded in the Patent Offlc,6( a^ sjate.-. 
ment specifying name, domicile, location, and citizenSMp ol;^Wva 
party applying; the class of merchandise, and the particmal' de- 
scription of goods comprised in such class to which the partiou-. 
lar trade-mark has been appropriated. 

Section 3 of this act provides that— 

no alleged trade-mark shall be registered * * * which is 
Identical with a registered or known trade-mark owaed by an- 
other, and appropriate to the same class of merchanrase. 

And section 7 of the same act provides that— 

any person who shall reproduce, counterfeit, copy or colorably 
imitate any trade-mark registered under this'act and affix the 
same to merchandise ot substantially the,same" descriptive prop- 
erties as those described in the registration shall be liable to an 
action on the case for damages. * * * 

And, finally, section 8 of this act provides— 

that no action or suit shall be maintained undSr the provisions 
ot this act in any case when the trade-mark is used * * * with 
the design of deceiving the public in the purchase of merclian- 
dise. ***--, 

!|!t \s fllear from tbS quotations from the statute 
above that after a trade-mark has been registered 
for goods of, a, ^-gertain particular description no 
other person caii register or use the same or sub- 
stantially t^e.same mark on goods of the s^m^ 
class as those described in the registr^iioji when 
such use would result in the deception of the pub- 
lic in the purchase of the goods. The essential 
thing to be determined now is the proper scope of 
the wbird "class" as it is used in the statute, and it 
must be held that in contradistinction to the " par- 
ticular description of goods " mentioned in the stat- 
ute the "class" of goods means that genus which 
wcludes as species such goods as if exposed ^o iifie, 
purcftasing public^ si^e by side with the "particu- 
lar " goods to which the trade-mark has been ap- 
plied will result in the "deception" mentionedin 
section 8 of the statute, whereby the purchasing 
pubUc, misled by the application of a single title to 
the various "particular" goods comprised within 
the class,. -trill, conclude that tiiey l^aj^^ originate^, 
f r£(Hj the same source and will purchase one under 
tl^e ynm-ession that it was made by the maker of 
the o,tl;er. 

Applying these principles to the present case, it 
Is clear that although between fruit-brandy and 
whisky there are certain well-recognized distinc- 
tions, yet they are both comprised in the elasa of 
distilled spirituous liquors, and that the purchas- 
ing public, seeiiig both with the same trade-mark, 
would conclude that they were produced by th? 
same maker. As above stated, it is the intent of 
the statute to avoid such a result, and registration 
was properly refused. 

The decision of the Examiner of Trade-Marks is 
afflnued. 




■7 



V 



dOMMISSIONEE'S DEOISIOKS, 



(U- 



Ex PARTE Crowley. 

Decided Marcli IS, 190S. 

1. Trade - Mark — Registbation Most Agree with Mark as 

Used. ^- 

Tlie law is very clear that the mark which is shown and de. - 
scribed in the registration mnst be the same as the mark 
which is actually used. There is no provision for the regis- 
tration of a mark not in actual use or which differs from that 
; in actual use. (^Qiting exparteHaU,98 0.G.,2ni.) ^ 

2. Same— INVAHIABILITT. 

There is no provision in the law for registration of a mark 
which may be varied as circumstances may render it neces- 
sary or desirable. To use such a variable mark would defeat 
the very purpose for which a trade-mark is intended. 

3. Same — Variance Between Showing and Statesient of Use. 

When the facsimile shows the mark as comprising the word 
" Tunnel," together with certain pictorial representations, and 
it is stated that the word "Tunnel" alone may be used, Held 
that registration should be refused. 

4. .Same — Limitation of Showing and Description. 

Held, further, that it the registration is intended to cover 
the word " Tunnel " alone the pictorial representation should 
be erased from the drawing and the description tliereof can- 
celed. If, on the contraiy, it is intended to cover the mark as 
it is shown in the facsimile, the statement of essential features 
and the description should be made to conform to such show- 
ing. 

Oif appeal. . 

TiiADE-M.VIllI FOR FOOTWEAR. 

Application of Thomas Crowley iilecl Janiiaty 13, 
1903, No. 64,843. 

Mr. James L. Norris for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Maiiss requiring that certain pietc- 
ejal JepVsiSiTtations shown in tlie facsimile be in- 
cluded in the statementof the essential features of 
the mark for which registration is sought. 

Applicant states that his trademark consists of- 
the arbitrarily-Selected word "Tunnel," and fur- 
ther states that the essential feafure of the mark 
is the arbitrarily-selected word ''Tunnel." 

The facsimile of the mark disclosed inthedraw- .. 
ing shows that tliismark is used in connection Witir 
the pictorial representation of a miner's cap, lamp, 
and tools. 

Applicant states that 1 he mark is generally ar- 
ranged as shown— that i.s tbe word together with 
the pictorial representat i^ <n— but that the pictorial 
representation may be oiuiitod and other matter . 
used in connection with the word. 

The law is very clear tbat the mark which is 
shown and described inilie rpgistration must bo 
the 'S'aiiie as the marlt which is actually used. 
There is no provision for the registration of a mark 
not in actual use or which differs from that in ac- 
tual use. {Ex parte Hall, Z8 0. (j!.,9A''ii.) 

Applicant states in his ajaplieation that tliff mark , 
is used as shov.u — that is, with tl^e pictorial repre- 
sentation— or that it may be used without such 
pictorial representation — that is, it may consist 
solely of the word "Tunnel." 



The Wol-d "Tunnel" to the eye clearly ditferl 
from the same word used in connection with the 
pictorial representation. In the mark shown this 
pictorial representation appeals to the eye, and it 
cannot be maintained that such representation is 
not an essential feature of the mark when its ap- 
pearance alone is considered. 

It is evidently applicant's desire to cover by the 
registration now sought a mark which may be va- 
ried, as circumstances may render it necessary or 
iiesu-able. There is no provision in the law, hdw- 
erer, for such a registration. The mark as described 
is devoid of those indicia which must be borne by 
the symbols known to commerce and j urispruderico 
as trade-marks. Such symbols must have inva- 
riability. They must be fixed, positive, unmistak- 
able. (See Broione on Tradn-Marl^s, sec. UZ.) The 
reason for this requireiuent is that the public ma>* 
hot be deceived or misled. In the present ease if 
the Word "Tunnel" alone appears oh goods atone 
tune and the same word with the pictorial repre- 
sentation at another time purchasers would be in 
doubt as to the origin of the goods. They could 
hot know whether or not such goods were the prod- 
uct of the same nialjer. To use such a variable 
mark would therefore defeat the very purpose for 
which a trade-marli is intended. There is no pro- 
vision in the law for the registration of such a mark. 
{Ex parte Hall, supra.) 

It is clear, therefore, that if this registration is 
intended to cover the word " Tunnel " alone the 
pictorial representation should be erased from tho 
drawing and the descnptiozi thereof canceled. If, 
on the contrary, it is inteaded to cover the mark 
as it is shown \a the fac-biuuie. tlie i-tatement of es- 
sential features and the de=e;ipti'in,slioiild be made 
to conform to suoh showing. 

The dssision of the Eyaininer of Trade-Marks is 
afQrmed. 




^w 






25^1 



March sn, 190 ?3. 




UNITED STATES PATENT OFFICE. 



Ex parte John M. Fisher. 
MS.D., Vol. 73, Page 345. 
Print for Lotion. 



AT) -Deal . 



Application filed March 1, 1902, Ho. 2,561. 
Mr. Fisher pro se. 



"This is an appeal from the action of the examiner refusing to 
register a certain print entitled "LISTERETS*, which is to be used 
for advertising purposes for a lotion. 

The print consists of the word "LISTEEETS* and certain word.*? 
in English and GeTnan, describing the lotion and the manner of us- 
ing it, together with the n^^me and address of the manufacturers. 

There is nothing artistic about this print nor is it the re- 
sult of intellectual labor founded on the creative powers of the 
mind. It does not, therefore, comply with the requirements which 
have been laid dovm as prerequisites for registration. See 
ex parte Baldwin, 98 0„G, , 1706, and the cases cited therein. 

The action of +he examiner refusing to register the print 
was correct and it is therefore affirmed." 



iflBL 



I1 



(Signed) F. I. Allen, 

Oon7li^;.sioner. 



March 27, 1902, 



^ 



260 




><^/_ 



COMMISSIONEE'S DEOISIOTS-. 



■ 



Ex PARTS Byrost Weston Company. 

Decided March S, lOo:. 

1. TkADE-MAHKS — " DUFIAKCE " — AnUITEAKY, NOT GSOORATH 

ICAL. . ^ 

The word "Doflance" Held registrable as a, trade-mark for 
papet, since its geographical siguiticance due to its use as the 
name of a towo does not overshadow its original xaeaoifig of 
a challenge and take from it its arbitrary significance. 

2. Billi—LoRG Use— Geoqbaphical Significance Aftshward 

ACQDIBED. 

Where a mark is arbitrary and distinctive when adopted^ 
but has since become prominent geographically as the name 
of a place,' JTe^ci lliat in justice the applicant cannot be.de- 
prived of his mark unless its geographical significance is so 
great as to make it certain that it would be understood in that 
sense by the purchasing public. 

Oif appeal- 

TBADE-MABK fob WBITI^•G-PAPEBS. 

Application for registration filed February 5, 
4902, No. C5,032. 

Messrs. Sttirtevant & Greeley for the appellant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marksjef using to register the word 
"Ireflance" as a trade-mark for writing-papers, on 
the ground that it is geographical. 

This mark -was- adopted as a trade-mark by By- 
von Weston in 1872 and was registered in this Of- 
fice on ApriHG,_1878, No. 5,€08. His strccesgorsiii 
business, who have continued to use the niark,[now 
seek to reregister it, and the principal ground of 
refusal is that the word has acquired a geograph- 
ical meaning by use as the name of a place in Ohio. 
At the time when this mark was adopted and be- 
came the propertj' of these parties as a trade-mark 
Defiance, Ohio, was not a place of importance and 
•was so little known that the use of the word by 
these parties upon goods made at Dal ton, Mass., 
had no geographical significance to the purchas- 
ing public and was understood only in its arbitrary 
and intended sense, meaning a challenge. 

If a party can be deprived of his right to an ar- 
bitrary and distinctive mark acquired by actual 
use by the fact that it has since the date of that 
use become proiniiient geoyiaiibically as the name 
of a jilace, it would seem that justice requires that 
the geographical signilieanee of the word be so 
great as to make it certain that it would be under- 
stood in that sense by tlic purchasing public when 
applied to goods. Doubts should be resolved in 
favor of tlie party usinir the mark. 

The word ''Dcliance" in thi.s case has the arbi. 
trary significince (>f a challenge, and it is thought 
that, it would he so ui.der.>toij(3 even by that part 
of the purcliasiiig public ha\ ing a knowl' dge of 
Dofiiince, Olii". Theg'^'-ds'-rtbosKpsrtfesari'not 
made at Defiance, Ohi'i, and that t"Wii hasno rc|in- 
tation as the place of mai.-ufncturp of paper. The 
geo'.rraphieal in-ai in-r of 'i-eword doe.s nt t orer- 
shad'iw its original meaniiii.' pud talie frcm it its 
arbitrary significance as a trade-mark for paper. 

Tlie decision of the Examiner of Trade-Marks is 
reversed. 



i 



RT 



v.^f^'. 






Idarch 12, 1902. 



o. 



■n^ 



Ul^I'Z&TD STATES PATE2TT OFFICE. 



Ex parte D, H, Rowe, 
MS. D.jVol. 73, p. 314. 



Lai: el. 



Appeal, 



Application filed Eebrimry 10, 1902, Uo. 2500, 



ilr. B« H, Rov/e pro se . 



This is an appeal from tlae decision of the examiner of ' 
trade-inarks refusing to register a certain- laoel for medicine. 

The lanel comprises a monogram of letters and f igures-u^p? 
"20 C. i', Co.," and the words "20th Century,"' \7ritten underneath- 
said monogram. 

The lahel is to "be used on the medicine "bottles of the 
20th Century Medicine Company, Yfliile the lahel is artistic, it 
does not in amy Dianner indicate the contents of the "bottles to 
which it is to he attached, Tliis descriptive feature is one of 
the requirements of a lal)el, Sc parte Jlahn, 82 0, G., 1210; ex 
parte American ¥ire YJ"ea,vers* Protective Association, 94 0, G. , 586, 
Failing in this requirement, it folloti^s that this label is not 
registrable. 

The decision of the exarainer is affirmed, 

(Signed) ?. I. Allen, 

Comraissioner. 

March 18, 1902, 



m 



i^^ 



J 



^^w^ 





UlTITKD STATES PATEM? 05'EICE, 



Ex parte Pil'ling & Iviadeley, 
lis. "^77 Vol, 73, p. 423, . 



Trade-LIark 



Appeal. 



Application filed NovemDer 26, 1901, Ho, 64,562, 



Attorney: Hows on & Howson, 



Under the practice laid down in ex pai-te Crowley, 99 
0. G,, 228, the description of the trade-mark must conform to the 
showing in the fac-simile. 

The decision of the exaininer of trade-marks is affirmed. 



(Signed) P. I. Allen, 

Corasiissioner, 



April 14, 1902, 



?'^\. •\ ■ ■'■ ^ 



UlTITED STATES PATEl^ OPFICE, 



Ex p_arte The Hart I.Ianufacturing Co., 
1S7 D., Vol. 73, p. 424, 



Trade-Mark, 



Appeal, 
Application filed November 22, 1901, No, 64,520, 
Attorney: R. C, Mitchell, 



It is clear from aji inspection of applicants' mark that 
the letter H and the diaiaond are Tsoth essential features iDecause 
"both would 138 impressed upon the mind of an o^bseryer. Both 
should "be included, therefore, in the statement of essential features, 
(Bx parteCircle Manufacturing. Co, , 98 0. G,, 2365; ex p arte 
Crowley, 99 0, G., 228), 

If applicants use the diamond shaped figure a.lone, 
registration therefor should loe olitained in a separate application. 

The decision of the exajiiiner is affirmed suhject to Rule 
21 "b, as amended. 



(Signed) E. I, Alien, 

Comi.iissioner, 



April 14, 1902, 



^\J''-- 



UNIT'J.<:S SPATES PATEirr OPPICE. 



JEb c part e Hanry ¥, Croolrer, 
MS. r., Vol. 73, p 455, . 



Trade-Mark 



Application No. 62,688, filed Pe'brurxy 14, 1901; 



Attorney Ro^bert W, Prost. 



Upon rehearing it is lield tliat the v/ord "Doris", althougli 
a geographical word, yet has other meanings and v-iould "be under- 
stood "by the purchasing pulalic in an arhitrary sense when applied 
to "boots and shoes. This v/ord is therefore registrable as a trade- 
mark under the principle laid down in ex p a r t e Manogue-Pidgeon 
Iron Co., 97 0, G., 1968, 

Tlie decision of the e2:ajuiner refusing registration is 
reversed. 



(Signed) P. I, A.llen,- 
Goinmissioner, 



April 16, 1902, 



kif- 



/<vUc,- 



April 10, 1902. 



S. E. T, 



UlvriTED STATES PATEHT 05TICE. 




Ex pai'te Tlie R, I, Sherroan Mantifacturing Coirpany, 
I^IS. D,, Vol, 73, page 463, 



ferk for Grocery Specialties 
and Druggists' Sundries, 




Appeal 



Application filed Ee"bru8ry 14, 1902, No. 65,112, 



Mr. Pred'k L, Emery and Messrs, Sturtevant and Greeley for applicant. 



Thi' 



This is an appeal from the action of the examiner of 
trade-raarks refusing to register the words "ROOSEVELT ROSE" as 
a trade-mark for certain named grocers' specialties. 

It appears that the word "ROSE" is anticipated hy 
prior registered trade-marks, "but it is contended "by applicant 
that the addition of the v/ord "ROOSEVELT" renders the mark so 
specific that there is no such similarity "between the two marks 
as to cause confusion or mistaZke in the mind of the puhlic. T 
dissimilarity, therefore, must he due to the eii5)loyi;ient of the 
v/ord "ROOSEVELT," and it. is this v/ord which would distinguish 
applicant's brand of goods from that to v/hich the v/ord "ROSE" 
alone is applied. 

It is well settled that a liTing celebrity is entitled 
to protection from the use of his name for purposes of trade by 
others, (ex p arte Mclnnerney, 85 0. G,, 148; ex parte JohJi Dewa 
& Sons, Ltd,,* 98 0, G, , 1037,) and this is especially true in th 
case of the narae of the President of the United States, It is 
against public policy for this office to lend its sanction to tl 
use of the President's name, by granting registration therefor t 
a trade-mark without his express consent. The mere fact that 



"rai 



"W 



"^ 



it has teen applied to a particular rose is not sufficient to 
v/arrent the assuirrption that this consent has "been given. 

The decision of the exarainer of trade-marks vra,s correct 
and it is accordingly affirmed. _ -' 



(Signed) F, I, Allen, 

CoraTiiissioner. 



April 26, 1902, 



B^ET". 



J,. 






:^^ 





I COMMISSIONEB'S DECISIONS, 



VAMJBN BERaH AND COMPANY V. BELMONT DlS- 

TiLLERT Company. ! 

Decided April SO, 1903. | 

1. TRApE-jrARK Interference— BuRDES op Proof— Registra- 

■'lON UWBER THE ACT OF 18T0. 

. "Where ■'□ a trade-jnark intei'terelicc one of the appIieaiUs 

had in 18TC registered the marlv under the invalid Trade-Mark', 

Act of 1870, Held tlmt he is not entitled to the date of «R»t>i>t|l 

•sf ration in deciding upon whom the burden of proof shall ht] 

-^plac.d. 

3. Same— Registbation as Evidence of OwuEBSBn". 

t'nder the present trade-mark law registration isprimafacie 
evidence of ownership, and therefore the opposing party must I 
show use in the United States before its date; hut this doesnot' 
apply to registration under the old law, which has been hfeld- 
unconstitutional. 
3. Sasje — Same— Present Law akd Old Law Compared- Usbv 
Not Required. 
Registration under the act of 1870 has merely the effect of a'l 
pynted publication and conveys no presumption of use in this 
>79iintry, since that act did not require use as a condition pre- 
Cddent to resigtration. 

Appeal on motion. 

TRADE-MARK FOR SPIRITUOUS LIQUORS. 

, Application of Vanden Bergh and Company filed 
February 20, 1901, No. 62,735. Trade-mark to Bel- 
mont Distillerjt Company registered April 23, 1889. 
No. 16,504. 

Messrs. Briesen & Knauth for Vanden Bei-gli and 
Compaify. 

Messrs. H. B. Willson & Co. and Mr. W. H. ^in- 
'"ilHon ffiir Belmont Distillery Comp'any. 

Allen, Commissioner: 

This is an appeal by Vanden Bergh and Com-j 
ijany from a decision of the Primary Examiner de- 1 
nying their motion to shift the burden of proof in | 
the above-entitled interference to the Belmont Dis- 1 
tillery Company. ' 

The records show that this interference was de- ( 
clared en December 6, 1901, and that the appli-; 
cants. Vanden Bergli and Company, and the regis- 
trant, Belmont Distillery Company, were made, 
respectively, the junior and senior parties thereto 
Mn.ler the well-settled practice of this Office be- 
cause of their respective dates of filiilg. 

This relation between the two parties makes it 
incumbent upon the junior parties to be the fli-st 
to take testimony. V 

In view of the fact that the senior party is a reg- 
istrant and of the further fact tlmt section 7 of the 
Trade-Mark Act approved March 3, 1881, provides 
that registration of a trade-mark shall heprima 
faei^: evidenc« of ownership" it is essential for the 
applicant in order to be entitled to ah Jiwafd of 
priority to establish, among other things, a date of 
use of the trade-mark in the United States prior to 
txie date of the other party's registration. 



In this interference, however, the applicants and 
appellants, Vanden Bergh and Comi>any, call at- 
tention to the fact that they registered the same 
mark for the same class of goods on April 25, 187G, 
under the Trade-Mark Act of 1870. They argue 
that this registration is a part of the records of 
this Office and should be recognized and entitles 
them to an award of priority should the opposing 
party take no testimony. They therefore contend 
that this registration of 1870 entitles them to be 
recognized as the senior party to this interference. 
The registration of 1876 was declared unconstitu- 
tional by the Supreme Court of the United States. 
(Trade-Mark Cases, 100 U. S., 83.) This registra- 
tioh therefore amounts to nothing more than, a 
publication and can have no more force and effect 
as against the common-law trade-mark rights of 
another party than any other publication. It can- 
not have the effect of a registration under the act 
of 1881, as provided in section 7 of said act. Fur- 
thermore, the registration of 1876 conveys no pre- 
sumption of use in the United States. The law 
then in force did not require as a condition pre- 
cedent to registration use in the United States, 
but was satisfied by a mere Intention to so use. 
Moreover, the records show that the applicants 
have their ddmlcile abroad and there is no allega- 
tion of use in the United States prior to the date 
of fihng of the present application. 

The decision of the Examiner refusing to shift 
the burden of proof is affirmed. 




, _ ^B'S DEOISIOUS. 







Ex PARTE Nichols and Shepard Company. 

Decided April ,?5, loos. 
Tkade-Mabk— The Woeds "Red River Special " Held Not Reg- 
istrable, 
The words "Red River Special" lield not to be registrable 
as a trade-mark for agricultural machinei-y on the ground' 
that the words "Red River" are geographical and the word 
"Special" is indicative of grade or style, and therefore the 
mark is not as an entirety indicative of origin or ownership. 
{Srowneon Ti'.tde-Marlcs, sees. 846, »17; exparte Buffalo PUts 
Co., 89 O. G., 8069.) 

On appeal. 

TRADE-MARK FOR AGRICULTURAL MACHINERY. 

Application filed November 26, 1901, No. 64,561. 

Mr. Rexford M. Smith for the applicant. 
Allen, Commis.iioner: 

This is an appeal from the refusal of the Exam- 
iner to register the words "Red River Special" as 
a trade-mark for agricultural machinery consist- 
ing of threshing - machines, clover - huUers, and 
grain-separators. 

The Examiner refused to register the mark "Red 
River Special" on the ground that ' ' the -words ' Red 
River' ai'e geographical and the word ' Special' is 

dicative of gi'ade or style and therefore the mark '^ 

Jiot as an entu'ety indicative of origin or own A - 
/ 'ip- 

/ An affidavit has been filed by the president of 
tlie company, to the effect that the^goods are man- 
ufactured atBattlecreek, Mich., andthatthe wotds 
" Red River Special" are Used ia an arbitrary and 
fanciful sense, that threshing-machines manufac- 
tured by the company are not built in any place 
or locality by the name of Red River and are not 
built for the purpose of being sold in such a place 
or locality, and that there is no place or locality 
by the name of Red River in which any threshing- 
machines are built. 

The test as to the *egisti-abilityot a mark which 
has geographical significance is whether the arbi- 
trary or fahcif 111 meaning of the niart sc)oTOTe6m.eS 
its geographical meaniig Ihat Ihe mark would or- 
dinarily b6 adoepted iu its arbitrary or fanciful 
seflSe and not as designating locality. {Bx parte 
Manogue-Pidgeon Iron Company, 97 O. G., 2084; 
ex parte Huenefeld, 98 O. Gi., 1968.) In order, 
therefore, to warrant the refusal of registration, 
the geographical meaning of the mark must be 
predominant. In the case of the words "RedRiver' 
the geographical meaning is predominant. 

These words signify a parish in the State of Loui- 
siana, a county in the State of Texas, and an im- 
portant river flowiag into the Mississippi, forming 
certain State and Territorial boundary-lines in the 
southern portion of this country, and the words 
"Red River of the North" signify another well- 
known river running from southern Canada 
through a portion of the northern part of this 
country. The Red River Valley of the North 
through which this river flows signifies a section of 
country noted for its agricultural products. 

The words " Red River" cannot be said to have 
any other than a geographical meaning. There is 
no fanciful suggestion attaching to these words to 
overthrow their geographical significance. 

The word "Special" alone is clearly not regis- 
trable. This is conceded by the appellant. The 
words "Red River" and the word "Special" not 
being registrable when used alone are not regis- 
brable when combined. {Browne on Trade-Marks, 
sees. 340, 347; exparte Buffalo Pitts Co., 89 O. Gr., 
3069.) 

The decision of the Examiner is aflrmed. 



/ 



IPT 



COMMISSIONER'S DECISIONS, 



, - COMMISSIONER'S I 



Ex PARTE Houghton; 

Decided April SO, WOS. 

1. Labels— Pristed Matter— Not Registrable. 

A label which contains nothing more than an arrangement 
of printed matter naming and describing a medicine, together 
with directions for its use and the name and residence of the 
manuf actmrer, is not an artistic production and is not regis- 
trable. 

2, Same— ARBrrsARv Word— Not Artistic. 

A label oontainiag a new arbitrary word may be an intel- 
lectual production; but such a word does not render the label 
artistic. 

?'..Sa»ii^-j453Siic§,of Aetistic Merit. 

In the a'bsencS fllE aftJstic merit there is no provision for the 
registration of a label under the statute relating to copyrights, 
under which statut« such registration is granted. 
I .;On appeal. 

label for medicinal pebpaeAtion. 

[ Application of Alfred S. Houghton filed March 
f 15, 1903, No. 3,616. 

Mr. Houghton pro se. 
' Allen, Commissioner:. 

1 This is an appeal from the action of the Exatnd^ 
, refusing to register a label entitled " DnHoSjli- 
( ton's Rheumalgine," to be 'used upon a medicinal 
I preparation. ^ .• • «', 

. J,. ^^S8tf A^n'iias been refused because the label 
involves in its production nothing beyond the ex- 
pected skill of the type-setter. 

An inspection of the label shows that the objec- 
tion is well taken. It contains nothing more than 
. a;i ^rangeni|!fit of'printed matter naming smd de- 
4.ScriBingtb6. medicine, together with directions for 
its use and the name and address of the mann*' 
facturer. It is well settled that such a label is not 
.registrable. {Sx parte Baldwin, 98 O. Q-., 1706; 
edoMi^B Mahn, 83 O. Gr., 1310.) 

AppUeant contends that the label is an inteUee- 
feual production because of the word "Rheumal- 
gine," which, he states, is of his own coinage, to 
convey the idea of a remedy opposed to rheumatic 
pain. However this may be, it is clear that this 
label is not an artistic production, and for this rea- 
son it is not registrable. As was said m ex parte 
-SfaAn^supra: — 

In the absence of artistic merit there is no pro- 
vision for the registration of a label under the stat- 
ute relatmg to copyrights, under which statute 
suph registration is granted. 

I'he action of the Examiner was correct and is 
affirmed. 



>i-5'A 




.^j>j^ 





^-^ y^:>' 6 




Ex PARTE HUTOHINS. 

Decided April S6. WOS. 

Trade - Mark— "Telegraphone" Refused Begistration on 

"telb9baph0ph0ne." [ 

The word " Telegraphone " refused registration as a trade- | 
marlc for apparatus for recording and reproducing sounds in 
view ot the descriptive word "Telegraphophone," wliich has • 
long been in use to desci'ibe such apparatus. 

On appeal. } 

TBADE-MARK FQR JiFFiS^TVa FOR REOORDISO AND REPRODUCING i 
SOUNDS, SIGNALS, ETC. 

Application of Stilson Hutchins filed June 1, 
1901, No. 63,498, 

Mr, Ellis Spear for the applicant. 
AitLEN, Commissioner: 

This is an appeal frop the action of the Exam- 
iner of Trade-iUjarks refusing, to, r^iat^ the word 
*' Telegraphone" as a trade-mark for apparatus 
for recording and reproducing sounds, signals, and 
the like. 

This mark must be refused registration on the 
ground that it is descriptive, and therefore it is 
wanecessary to discuss the other reasons for re" 
fnsal stated' by the Examiner. It is a contraction^ 
of the descriptive word teleffraphophone,\v!hieh 
has long been used to describe machines of the ' 
same class as those to which the present mark is 
applied. The word telegraphophone was in use as 
a descriptive term long before the date of adoption 
alleged by this appellant, as will be seen by refer" 
enoe to the patent to Wheless, No. 410,305, Sep- 
tember 3, 1889, and to the Century Dictionary, 
which defines its meaning as — 

an apparatus for reproducing at a distance the sounds which 
produce a graphophonic record; also an apparatus for produc- 
ing a graphophonic record at a distance oy means of a tele- 
graphic circuit. 

The contraction of this word by the omission of 
one of its syllables does not produce a word so dis- 
tinct from the original as to become an arbitrary 
and fanciful mark, but, on the contrary, the word 
retains its descriptive character and would be so 
linderstood by the public. 

The decision of the Examiner of Trade-Marks ie 
afBriiied.. 



tt- 




,.,^, 



^/ 



^^& 



fv.' 




ft ^Jl/f^. 



'/ 



^MiBSIONEB>a DEGISIONS. 



Ex PARTE McCLAIN. 

•: 'Decided May 7, IdOl- ^ 

Trade-Marks-" FELT-J-HSs-'-DESCRiPTrPB. j„„„.i 

The word-" Felt-Less " as a trftde-mark for sweat-pads used 

in connection with harness tor horses refused registration on 

the ground that it is either descriptive or deceptive. 

TRADE-MARK FOR'SWEAT-PSlDS. 

Application of Edward L. MoClain filed October 
22j'4«08, No. 5&,710. 
Messrs. Murray & Murray for the applicant. 

Allen, Commissioner: ' , -r. '■ 

This is an appeal from the action of the Exam- 
inerof Trade-Marks in refusing to register the word 
' ' Felt-Less " as a trade-mark for sweat-pads. 
' The pads towhich the trade-mark is applied are 
ti^ed in connection with harness for horses. Such 
pad^ as eomnionly made comprise in then- con- 
struction a thick piece of felt. It is clear, there- 
fore, that the word "Felt-Less" as applied to a 
sweat-pad for harness would naturaUy be under- 
stood to be a pad made without felt. So under- 
stood the word is obviously either descriptive or 
deceptive and for this reason unregistrable as a 
trade-mark. 

" Applicant contends that in the present case VaA 
Word is not descriptive, because as a matter of fact 
the pads to which it is applied do have felt upon 
them in very prominent positions and that for thiS 
reason the word would not be taken in a descrip; 
tive sense by the purchasing public. Without 
actual inspection of a pad, however, it would b^ 
supposed by an intending purchaser that a pad to 
which this trade-mark is applied is one contaming 
no felt The word is therefore descriptive. 
'■ Applicant contends, further, that this word is 
composed of the two words " felt " and " less " and 
&iat it is " suggestive of the idea that the pad rests 
inore lightly on the neck of a horse than do other 
pads on the market. In reply to this it may be 
said that although it does not so appear in the 
brief 'filed by applicant, yet it was stated orally a,t 
the hearing that the pads are made of canvas 
stuffed with hair, the only felt thereon being ap- 
plied thereto for ornament and not as a wearing- 
surface. In view of the fact that the pads in ordi- 
nary use have, as above noted, a wearing-surface 
of felt the argument that the word "Felt-Less" 
applied to applicant's pads would not be taken m 
a descriptive sense is not convincing. 
'"The decision of the Examiner of Trade-Marks 
tfras correct, and it is accordingly afQrmed. 




ff. 



t^^ : jz/c^ A 




0OMMISSION££'S SEOISIONS, 




f 



P.ABTE FlEBBGER. 



Decided Hay S, 1903. 

ij!RADE-MARKr-"S0Ul\CoUI'ORT" FOR FORNAOBS— NOT DESORlf-^ 
TIYE— KkOISTRABLE. 

The words "Solid Comfort" held to be registrable as a trade- 
mark for furnaces on the ground that even though these words 
may convey the idea that persons using these furnaces wil J 
experience that degree of comfort known as " solid comfort ' 
t^ey are not descriptive of the quality or construction of tlie 
ti|mace3. They merely suggest a remote result which may p^ 
^jrought about by the use of the f uf naces. 

On appeal. 

T51ADE-MARK FOB FURNACES. 

Application of Frank F^pbegpr filed October 34 
^901, No, 64,347. ' " ' 

Messrs. Humphrey A Eum^hre^ for the p.pp^- 
cant. 

Allen, Commissioner: 

This is an appeal froi4 the refusal of the Exam- 
iner of Trade-Mfwks to register the words "Solid 
ComlorV as a trade-mark for soft-coal fumaees. 

The Examiner holds that these words are ' ' mani- 
festly descriptive and advertising as applied to 
soft-coal furnaces." 

The words "Solid Comfort," even though they 
may convey the idea that persons using these fur- 
naces will experience that degree of comfort known 
as "solid comfort," are not descriptive of the qual- 
ity or construction of the furnaces. The words 
merely suggest a remote result which may be 
brought about by the use of the furnaces, and for 
thisreason they are registrable. {CRourkev. Cen' 
J'ral City Soap Company, 35 O. G-., 876.) 
^ As stated in ex parte Peek, (9G O. &., 435;) 

The result or condition suggested by the word is so remote 
from the article to which it is applied that it cannot be held to 
be one of those descriptive terms which any person has the 
right to use in describing similar articles and which therefore 
cannot be exclusively appropriated by one person. 

The decision of the Examiner of Trade-Marks is 
rfevferaed. 





^^^/ 



OOMMISSIOiniR'S DECISIONS. 



t»ABTB Alabama Tube aisd Iron Compa>"y. 

Decided May 17, 1003. 
TRiDE-MABK— " Alabamatude " Refused Eeoistration. 

The word " Alabamatube " can mean nothing difEerent from 
the two words "Alabama tube "—that is, a tube produced in 
Alabama. The word is geographically descriptive and cannot 
be registered as a trade-mark tor tubes. 

On appeal. 

TRADE-UARK FOR IRON AND STEEL TCB g. 

Application filed April 8, 1003, No. 6o,535. 

Mr. Chas. Denegre for the applicant, 
Allen, Commissioner: ■ ; 

This is an appeal from a decision of the Exam- 
iner of Trade-Marks refusing to register as a trade- 
mark for iron and steel tubes the word "Alabama- 
tube." 

Appellant is a corporation located in the city of 
Birmingham, in the State of Alabama, and the 
Avord for which registration is sought is composed 
of the two words Alabama and tube. 

The word ' ' Alabama " alone is clearly not entitled 

to registration because it is purely geographical. 

As stated by the Supreme Court of the United 

States in Columbia Mill Company y. Alcorn etal., 

(05 O. G., lOlG,) it is one of those- 

• • * words in coimiion use dS dfeignaiTiri'g locality, section 
or region of country. 

The same Court in Canal Company y. Clark (13 

Wall., 811) said: 

These merely geographical names cannot be appropriated 
and made the subject of exclusive property. 

The word ' ' tube " is the name of the product and 
cannot be a valid trade-mark. 

It is contended by applicant that by combining 
these two words into one the result is a word which 
is arbitrary or fanciful in meaning. Such a conclu- 
sion is, however, entirely unwarranted, for clearly 
the word "Alabamatube" can mean nothing dif- 
ferent from the two words "Alabama tube "—that 
is, a tube produced in Alabama. The word is 
geographically descriptive. 

The decision of the Examiner of Trade-Marks 
was right, and it is accordingly affirmed. 





COMMISSIOIJEE'S DEOISIOMy. 

Ex PARTE VOGEL AXD SON. 
Decided May 17, 1001. 
1. Trade -Mark— "Maple -Leaf" Anticipated by "Silver'- 
Leaf." 
A trade-mark consisting of the words " Maple Leaf and the 
representation of maple-leaves refused registration upon a reg 
istered mark consisting of the words.'..' Silver Leaf" and the 

representation of maple-leaves. 
3. Same— Ide.-jtity of Marks— Appearance As Well as Sound 

TO be Considered. 
?ii determining the question whether or not 'one muiV so 
nearly resembles the other as to cause confusion in the mimls 
of the public the appearance of the marks is as Important as 
the sound of the word? used therein when those words are 
spoken. 



N 



On appeal. 



TRADE-MARK FOR LARD. 



Application of Jacob Vogel and Son filed De- 
Sember 18, 1805, No. 50,480. 
Messrs. Murray & Murray for the applicants. 

Allen, Commissioner: 

This is an appeal from the deciaion of the Ex- 
plainer refusing to register as a trade-mark for 
lard the words "Maple Leaf" arranged ina curved 
line and the illustration of a group of three maple- 
leaves below the said words. 

Eegistration is refused on the trade-mark 6f ¥.• 
R. Jenkins and Son, No. 5,604, registered March 5,- 
1878, and of Swift and Company, No. 34,513, regis- 
tered April 10, 1894. 

The mark of Swift and Company consists Of the 
words " Silver Leaf" arranged in a curved line and 
the representation of a group of two leaves, with 
their stems together, placed below the said words. 
The leaves in the registered mark are first de- 
scribed as "silver leaves; "but the mark is not con- 
fined to the use of any one color", for, as stated in 
the specification, "the color is not the essence of 
the trade-mark." The mark is specifically de- 
scribed as consisting of "the words ' Silver Leal^l 
and the representation of two leaves." In this 
latter description it is to be noticed that the limit- 
ing word "silver" is omitted before the word 
"leaves." The representation of the leaves ru the 
registered mark Is clearly that of maple-leaves; 
One of the varieties of maple is the silver or white 
in9.ple! . ■ ' 

la considering' ffie idfentlty of tWti tradiBmairlia 
the appearance of the marks is as important as the 
sound of the words used therein when these words 
are spoken. Both senses are to be used in deter- 
mining the question whether or not one mark soj 
nearly resembles the other as to have the tendency"*'' 
to mislead and to cause confusion in the minds of 
the purchasing public. 

The mark sought to be registered by the appel- 
lants is so nearlj^ like the mark registered by Swift 
and Company as to have the tendency to mislead 
and to cause confusion in the minds of the pur- 
chasing public, and for this reason the registra- 
tion of this mark was properly refused. (Ex parte 
Kauftnann and Blache, 84 O. G., 145; ex parte 
Kingan and Company, 97 O. G., 3085.) 

The decision of the Examiner refusing registra- 
tion of the mark on the ground that it is antici- 
pated by the registered mark of Swift and Company 
is affirmed. 

'iJlivingTteached this conclusion, it is not neces- 
sary to consider the formal matters raised by peti- 
tion. The iietition is therefore dismissed. 



J^^ A 



UUITED STAOES PATENT OFPICE, 



Ex: parte The Eureka Medicine Company of New T^ork, 
MS. D, Vol. 74, Page 92, 



Application filed April 25, 19D2,No. 2,777. 



On appeal from th.e action of the examiner refusing the 

registration of a la'bel which involves printed matter and the 

pictorial representation of a red cross and circle also printed in 

red the Commissioner held as follows: 

"The refusal of the examiner to register the, latel shown and 
described "by the appellant is properly "based upon the law as laid 
down in the recent decisions of ex parte Baldwin, 98 0. G,, 1706, 
and ex parte Houghton, 99 0, G. , 1623, andhis decision is therefore 
affirmed. , , , 



(Signed) P. I. Allen, 

Commissioner, 



May 28, 1902. 




OOMMISSlONEE-a DE0ISI02fS.' 

1*^ PARTK THE C.^KK CAST Sr^E. CkmE^x 
I Decided June lo, 1M». 

Ojt appeal. 

I-ABEt, FOR CEMCKT. 

Application filed April n, 1903, No. 3 734 
Mr. Walter A. Holden for the applicant. ' 

ALLEN, Commissioner: 

iZrt ? *? fPP^f ^ ''Oil *te refusal of the ^^^m- 

me?t for pt^'^'^f *^' ^^'^'^ "C^t St««l Ce- 
ment for Perfecting Iron and Steel Castings " and 

the monogram of the letters "OS" 
The words of the label are printed in three par- 

£ firtlfn; J.^\^°'»°P^«»is placed between 
Ktte lirst line, which consists of the words "Cast 

Sriorr'^r "^.^ *^^ ^•^-^'^ ^-« consisting" 
^ words 'Tor Perfecting." The letter "S"S 
^ ^^ya^n has a peculiar carl at the low^ 
^d. which encircles the lower portion of thX 

The Examiner states that— 
K^'tt^p^feVl'"'"'' '°^ «•« '•«^" that the label is not 
and Cites in support of this holding the decision of 

The appellant states in his brief that- 

■ ters •■ C S." a?e an mistfc reprodS^SlT' ?\ ^'l« entwinedkl 
t.oa. That the remaining poM™n of Z l/hi?^^*'"''"'" P'-o^""" 
feetmglron and Steel GaStlnKs"?s thlrt^=„V-9?™®°' '"''I'e'-- 
disputed. K^oauBg!, IS the descnptire part is not 

f n^r° ^- T^^^^ consideration of the label sought 
to be registered it is held that the ExaminSc 

^TounT^hrr/ '" ''"^'"= registration Tn the 
Si ' ''°* constitute an artistic pro- 

It cannot be said that this lahpl is " ti,o » ^^ , 
iat^lectual labor f ponded ^the La^S/ Jt^s' 

The label has no originality, but is merely ihe re- 
sult of the expected skUl of the printer 
The decision of the Esamtoer is aflBrmed. 



T 



27£ 




COMMISSIONER'S DEOMONS. 



Ex PARTE ^E ALADDIN" Gas I;IGHTC6MP^53*, 
Decided June SJ, 1902. 

TrADE-MABE— GrOpDS OF THE SAUE CIiASS— LAUFS AND BlOTCLE- 

Lamps. 
A trade-mark £or gas or vaporizing lamps, except bicycle- 
lamps, refused registration in view of substantially the same 
mark registered for bicycle-lamps, since the goods are of the 
same class and the use of the saoie mark by different owners 
will mislead the purchasing public. 

On appeal, 

TEADE-SURK FOR LAMPS, ETC. 

Application filed February 17, 1903, No. 65,130. 

Mr. E. &. Siggers for the applicant. 
Allen, Commissioner: 

This is an appeal from an action of the Bxaminer 
of Trade -Marks refusing to register the w<wd 
"Aladdin'' as a trade-mark for gas or vaporizing 
lamps that generate gas or vapor from gasolene 
and similar hydrocarbons and bum the same; 
also, Ughting systems in which the gas is generated 
from gasolene and similar hydrocarbons and hav- 
ing a plarality of burners at which said gas or va- 
por is turned to produce artifleial light. 

Reg/lstration has been refused in view of the prior 
regaftration to Eno, No. 37,581, December 31, 1895< 
of ihe words ' ' Aladdin's Lamp " and a pictorial rep- 
reJientation f or bicycle-lamps. 

Applicant expressly excludes bicycle-lamps from 
the goods to which his mark is applied. 

'The use of the word "Aladdin" alone in place of 
■ttie registered mark above described on goods of 
the same class would tend to mislead and deceive 
the purchasing public, since the marks are so simi- 
lar that it would be supposed that they designate 
^oods of common origin. It is to be determined, 
therefore, whether or not bicycle -lamps are in. 
eluded in the same class of goods with lamps gen- 
Jly. 

The word class as it is used in the statute relat- 
Jing to trade-marks means that — 

■genus which includes as species such goods as if exposed to the 
purchasing public side by side with tne "particular" goods to 
which the trade-mark has been applied will result in the " de- 
ception " mentioned in sections of the statute, whereby the pur- 
chasing public, misled by the"3I|iplication of a single title to the 
vaiious " particular " goods comprised within the class, will con- 
clude that they have originated from the same source and will 
purchase one under the impression that it was made by the 
maker of the other. (£>■ jmrte Ch-own Distilleries Co., 98 0. G., 
2590.) 

Undoubtedly bicycle-lamps and lamps are goods 
of the same class as above defined. Bicycle-lamps 
I are commonly made by makers of lamps generally, 
and the purchasing public seeing the same mark 
applied to each would naturally suppose them to 
be products of the same maker. A registration 
which will lead to this result should not be granted. 
The action of the Examiner of Trade-Marks was 
right, a«id it is affirmed. 




o 








aOMMISSIONER'S DECISIONS, 






Ex PARTE Magnus Metal Company. 

Decided June SB, ISCS. 
■J^dk-Mark— " Galena"— Hegistbable. 

The word "Galena" as a trade-hiark for manufactured 
metala Be W to be registrable on the ground that while it has 2 
limited geographical signifloanoe and is also descriptive of 
Ipad sulfld its arbitrary signifloanoe when used in connection 
with antifriction metals is so far predominating that it wilt be 
so understood by the public. 

On appeal. 

TRADE-MARK FOB SLiNUPACTUBED JIETALS. ^ 

Application filed January 17, 1903, No. 64,180, 
Messrs. Peirce & Fisher for the applicant. 
AliiBn, Commissioner: 

This is an appeal from an action of the Examiner 
of Trade-Mayks refusing to register as a trade-mark 
for ap. aiU^r^ction metal a mark described as cpn- 
^^stingof— " ' ■>■''■ 

the word "Galena" Inclosed within a diamond-shaped border. 
^^^Z°^^ being formed of letters of different heights so that the 
ffiaped ou?m£^ "*'" '^"^" ^^^ ^^ °* * general diamond^ 

The Examiner has objected to the reg^staration 
of the word "Galena" because, in his opinion, it 
is either descriptive of the goods to which it is ap- 
plied or deceptive, and, further, because it is geo- 
graphipal. 

It is true that the word " Galena" is the name of 
one of the principal lead ores— viz., lead sulfid. It 
is also true that some antifriction metals contain 
lead in their composition; but' it is not believed 
that the purchasing public would ever take the 
word "Galena" as appUed to antifriction metals 
as indicating that galena or lead sulfid forms a part 
thereof, because, as is well known, such lead sulfid 
is not suitable for such a use. The word, there- 
fore, is not descriptive and necessarily not decep- 
tive. 

This word haa also a geographical meaning. It 
is the name of a small town in the United States. 
It. is not, however, one of those words which are 
used merely as designating locality. As used in 
connection with antifriction metals its arbitrary 
significance is predominating. The purchasing 
public would not understand it as indicatmg the 
place of origin, especially in view of the fact that 
applicants do not carry on their business at any 
place called "Galena," but at Buffalo, N. Y. 

The decision of the Examiner of Trade-Marks is 
feversed. '" " ' ' 



• OqpiSSIOlifEE'S DECISIOP^. W| 



Ex PARTE The Laxakola Company. 



Decided June ftJ, 190S. 
Trade-M^bks — Anticipation — " Debmakola " 

'Dermakola" should not be refused registration 



AND "Dkbma- 

CORA." 

The word ' 
upon the registered word " Dermacura " in view of the differ- 
ence in tbe soiind of the words and in view of the difference in 
appearance due to the style in which they are printed. 

On appeal. 

TRADE-MARK FOR PROPRIETARY MEDICINES. 

Application filed November 37, 1901, No. 64,578. 

Mr. E. Q. Siggers for the applicant. 
AjiiLEN, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the word 
"Dermakola" as a trade-mark for an ointment for 
the skin. The word is shown in the facsimile and is 
described as printed in script type on a red band 
extending diagonally across a circular field, the 
upper and lower zones of the field being also red, 
leaving tapering white sections on opposite sides of 
the band. 

Bpgistration has been refused in view of the prior 
registratioUi to BJackstone, No. 18,936, Februarys, 
1891, of the word " Dermacura," applied to an oint- 
qqtpnt. 

The question presented in this case is: Does the 
mark for which registration is sought so nearly re- 
semble the prior registered, njfirk as to cause con- 
fusion or mistake in the mind of the public? In 
considering this question, as was stated in ex parte 
Yogel and Son, (99 O. G., 2321)— 

* * * the appearance, of the marks ig as important as the. 
sound of the words usect therein whpn thjese. words are spoken. 
Both senses are to be used, in determining. the. question whether, 
or not one mark so neaj-ly- resembles the other, as to have the 
tendency to mislead anfl to, o^use. confusion In the minds of the 
pprchasmg public. 

In the case no,w under consideration the mark 
for which registration is sought has to the eye an 
appearance so decidedly different that no person 
of ordinary intelligeriiOe would mistake one for the,' 
other. The word "Dermakola" is believed to be 
so 'distinct in sound as well as in meaning from 
" Dermacura" that qo one would mistake one for ■ 
the other. This conclusiop is strengthened by the 
fact that numerous registrations Jiav^beeh granted 
for compound words of this claas in which the ele- 
ments "cura," "kola,"and "derma" appear. This 
class of words is therefore well known to the pur- 
chasing public, and the distinctions between them 
are recognized. 

It is believed that there are differences between 
the registered mark and that presented in this case 
wl-'' '• we sufficient to warrant the grant of regis- 

y 

" '-i the Examiner of Trade-Marks is 



W'"' 





2771 



Ex PARTE HOLOPHANE GLASS COMPANY. 

Decided June SO, 1901. 

1. Trade-Mark— Patented AJtTiCLE—"HoLOPHANE''— Not Reg- 

istrable. 
The word " Holophane '' alone is not registrable as a trade- 
mark for prismatic glass, tor the reason that it is the name of 
the patented article in connection with which the mark is 
used and for the further reason that the word is shown to have 
been used as the name of the article long prior to any date of 
use which is set up by the present applicant. 

2. Same— Name and Arbitkaet Symbol— Not Registrable. 

Where it appears that the word "Holophane" alone is ret 
registrable, it cannot be made registrable by association witfi 
an arbitrary symbol. (Ex parte Farnum and Company, 18 
O. 6., 412.) 

Qn appeal. 

TRADE-MARK TOR PRISMATIC GLASS. 

Application filed December 21, 1901, No. C4,726. 

Mr. Wallace A. Bartlett for the applicant. 
Allen, Commissioner: 

This is an appeal from an action of the Examiner 
of Trade - Marks refusinff to register the word 
' ' Holophane " borne on the face of a seal or notched 
edged disk as a trade-mark for pressed glassware 
ior illuminating purposes. 

It appears that the word "Holophane" is the 
pame of the patented article in connection with 
which the mark now under consideration is used; 
This word was used as the name of the article long 
prior to any date of use which is set up by the 
present applicant, as is shown by the French 
patent to Psaroudaki, No. 233,140, September 30, 
1893. This word alone is not registrable to this 
applicant. See the decisions of the Supreme Court 
of the United States in Slrff/er ilanv fa during 
Company v. June, (7-5 O. G., 1703,) Tlie EolzaiifeVs. 
Composition Company, Ltd.,^. Rahtjens Ameri- 
can Composition Company, (97 O. G., 9S8,) and 
the Commissioner's decision in ex parte Velvril 
Company, Ltd., (84 O. G., 807.) Since, therefore, 
this word alone is not registrable, it cannot be made 
registrable by association with' an arbitrary sym- 
bol. (Ex parte Farnum and Company, 18 O. G 
«3.) " ,. 

The mark as shown is not registrable. The ac- 
tion of the Examiner, therefore, refusing registra- 
tion was right, and it is afflrmed. 





/<> a. tzf. 



4S& 



OOMMISSmNEE'S DECISIONS. 



Ex PAROLE Castle Brook Carbon Black. 

COMPANT. 

Decided June SO, 1902. 

Sbade-Mark- The Word "Napthol-Methane" Registrable 
FOE Carbon-Black. 
The. compound n;ord " Napthol-Methane " Meld to be regis- 
trable as a trade.-mark for caf bpp-black, tor the reason that it 
is i^ell] known that thig substanpe contains nothing but car- 
bon. If these words are descriptive at all, they are, not de- 
s,criptive of this substance; neither are they decip,tive, as they 
would never be understood as describing carbon-black. 

On appeal. 

trade-mark for carbon-black. 

Application filed January 31, 1902, No. U,m). 

Mr. E. ff. Siggers for the applicant. 
Allen, Commissioner: 

This is an appeal from an action of the Examiner 
of Trade -Marks refusing to register the word 
"Napthol-Methane" as a trade-mark for earbo^- 
black. 

This word is manifestly a compound of the two 
words "naphthol" and "methane," and registra- 
tion has been refused because, in the opinion of the 
Examiner, it iseither descriptive of the character or 
composition of the substance in connection with 
which it is used as stating that this substance eon- 
tains naphthol and methane, or it is deceptive if 
the substance does not contain these elements. 

Itistobeobservedthat the trade-mark for which 
registration is sought is applied to carbon-black, 
which, as is well known, contains nothing but car- 
bon. It is clear, therefore, that a substance con- 
taining naphthol and methane could not be car- 
bon-black, and the word "Napthol-Methane" 
would never be understood as describing carbon- 
black. If they are descriptive at all, they are not 
descriptive of this substance. 

Furthermore, it is believed that one wishing to 
purchase carbon-black would not be deceived by 
this trade -mark and suppose that the carbon- 
black contains naphthol and methane. 

This mark is therefore registrable, and the action 
'bi the Examiner of Trade-Marks is reversed. 




v78 




r'f'v' 







I 



/^^ 



^ 



^/^ 



OOMMISSIONER'S DEOISIONS- 



Ex PARTE West. 

Decided June 30, 190?, ' 

\. Tbade-Mark— The Word " Bestopall " Not Registrable. 
The word '• Bestofall" not registrable as a trade-mark, as It 
indicates the quality o£ the goods In that they are the best ot 
all In that class. 
2. Same— The Single Word " Bestofall" Not Different Fnqjii 
THE Three WoRDB " Best OF All." 
The single word "Bestofall " conveys the same idea as the 
three words "best of all." It cannot, therefore, in any true 
sense be said to be a coined word. 

On appeal. 

TRADE-MARE FOR BAEERV PRODUCTS, ETC. 

Application of Erik West filed April 9, 1903, No, 
65,533. 

Mr. Erik West pro se. 
Allen, Commissioner: 

This is an appeal from the refusal of the Exam- 
iner of Trade-Marks to register the word "Bestof- 
all " as a trade-mark for bakery products. 

The word "Bestofall" is descriptive of the qual- 
ity or characteristic of the article to which it is ap- 
plied.// It is descriptive in that it indicates that 
the article to which it is applied is the best of all 
in that class. If this is not true, the word is de- 
ceptive. Either of these reasons constitutes a suf- 
ficient ground for the refusal of registration. / ' 

In ex parte Miller (95 0. G., 1453) the word " Fit- 
meeasy" was held to be — 

• • • desorlptlveand that it Isnotrendererttheless'sobythe 
fact that it is made up of three words. It.'cannot in any true 
sense be said to constitute a coined or arbitrary word'whcn U 
conveys the same idea whether read or pronounced as would the 
three words written separately. A mere change in the mannjer 
of writing the marlc cannot be held to change its character so 
long as the impression conveyed by it is the same. 

This reason is equally applicable 'tb> the word 
." Bestofall." 

The decision of the Examiner of Trade-Marks is 
affinnert. 




/o o^ 



^■ 



<fy 



d(5MJIIgSI0NEI!;'& DEOISIONa 



/'' 



.v;i 



,, Ex PARTE Swan and Finch Company. 

Decided June SO, 1901. 
Trade-Mark— A "Bed Star Represented by aWordorSym' 
bol " Not Registrable Over a " Star Inclosing the Let- 
ter 'G.'" 
A trade-mark consisting of a "red star represented by a 
word or symbol " Held not to be registrable in view of the reg- 
istered mark which consists of a " star inclosing the letter ' '" 
on the ground that there Is suoh a resemblance between the 
two marks that the purchasing public would be deceived. 

On appeal. 

TRADE-MARK FOB LUBRICATINQ-OILS. ■ 

^ Application filed November 33,' i9ClO, I^q. 63,165; 

Mr. K Q. jiggers for the applicant 
Allen, Commissioner: 
. This is an appeal from the action of the Ex:am^ 
iner refusing to register as a trade-mark for enginer 
oil a mark described as a red star represented by 
word or symbol. The facsimile shows only the 
symbol. 

Registration has been refused in view of the prior 
registration, No. 23^966, to the Galena Oil Works 
of a star mclosing the letter " G." In this regis- 
tration it is stated that the letter "G" may be 
omitted. , The registered mark may therefore con- 
sist of the representation of a star. It is clear that 
there is such a resemblance between the two marks 
that the purchasing public would be deceived. 
jRegistration, therefore, was properly refused. 

The action of the Exammer of Trade-Marks is 
affirmed. 




/Od,^. ^^'^ 




279 



Ex PARTE Aspegre:^ and Compant. 

Decided June S3, 1903. ^ 

1. TttADE-MABK— The Word "AuROKi" Reoistbablk. 

Theword "Aurora" Beld to be registrable as a trade-mark, 
as its fanciful or arbitrary meaning so predominates over its., 
purely geographical signifloance that it would be understood ■ 
by the purchasing public as an arbitrary wor4 designating; 
origin or ownership. 

3. Same— Abbitbart Words— Name op Looalitv. 

Where a word having an arbitrary or fanciful meaning has 
been adopted as a name of locality, Held that the question 
whether or not it is registrable as a trade-mark depends upon 
the question whether or not its arbitrary meaning so far pre- 
dominates over its geographical meaning that it will be so un- 
derstood by the purchasing public. 

Z, Same— Resistbable Mabks— Ihdioation op Origin or Own- 
ership. 
Whether or not a word is J-egistrable as a trade-mark de- 
ponds upon the meaning which will be given to it by the pur- 
chasing public. If it will be understood as indicating origin 
or ownership, it is registrable. 

On appeal. 

TEADE-MARK FOB PRODDCTS. 

Application filed June 7, 1901, No. 03,534. 

Messrs. Munn & Co. for the applicant. 
AlIiEN, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the word 
"Aurora" as a trade-mark for oils, lard, syrup, and 
honey. 

It appears that this word is extensively used in 
this country in a geographical sense as the name 
of several cities and towns and of one county. The 
most important of these places is Aurora, 111., a 
manufacturing city of some prommence. These 
cities and towns appear in the various States 
throughout the country from Maine to Oregon. 
This geographical meaning of the word, therefore, 
is in this country well understood. 

On the other hand, it has mythological and 
other arbitrary meanings, as well known. In my- 
thology it is the goddess of morning, or daybreak, 
and hence "Aurora" signifies the rising light of 
mornmg— the dawn of day. The phenomenon 
called the " aurora borealis " is commonly referred 
to as "the aurora." 

The question presented, therefore, in view of 
these various significations is whether this word 
would be accepted by purchasers of the goods to 
which it is appUed as arbitrary and fanciful or 
would be given its geographical meaning. 

It was stated by the Supreme Court of the United 

States in Columbia Mill Company v. Alcorn et al 

(05 O. G., 1916) thatr- 

* J * A^?l^^^ geographical names cannot be appropriated 
and made the subject of an exclusive property. They do not in 
and of themselves, indicate anything in the nature of orisin 
manufacture, or ownership. w .^^ .siu, 



ii^ 



There is, however, as was pointed out in ex parte 
Manogue-Pidgeon Iron Company, (97 O. G., 3084,) 
in addition to those words, which have no other 
significance than a geographical one, a large class 
of words which, though used to designate some 
town or locality, have also an arbitrary or fanci- 
ful meaning. The word "Aurora" is of this latter 
class. 

Whether or not these words are registrable as 
trade-mark^ depends ffpflij Jtjfg meaning yhich will 
be givep t6,th.eiii.,by,j;BJ^ pijroha^ing publjc. In 
g^m^'cltes'ti^V^^i^bitt^jr, meaning would be ac- 
cepfed, and in such cases these words will truly in- 
dicate origin or ownership. {JEx parte Manogue- 
Pidgeon Iron Company, .lupra; ex parte Huene- 
feld, 98 O. G., 1908.) In other cases the geograph- 
ical meaning is so well known as to be predomi- 
nating. In this class of ceases the geographical 
significance naturally follows from such use and 
tlj^ey would not be understood in an arbitrary or 
fandif ijl sense. . , ^; , 

The fanciful meaning of %\Le word "Aurora" has 
undoubtedly led to it? adoption as a name of local- 
ity in various parts of the country, and the fact 
that it has been sq. adqpted in widely-separated 
places is evidence of the general understanding of 
this fanciful meaning and that this meaning is, to 
pleasing to many persons a* to sflggest to them 
that the word is suitable as a designation of that 
locality in which they dwell. Itfis true that by 
this use the word has acquired a geographical sig- 
nificance of considerable extent; out it cannot be 
said that this geographical significance has diveste d 
it in ^ny degree of its mytholoficStii or arbitrary 
meaning. Qn tlie cp^tr^py; ^ibbis meaning is under- 
stood by a large part of the persons to whom its 
geographical significance is best known, while by 
a majority of the people in this country it is un- 
derstood only in its arbitrary sense. The number 
of people, therefore, to whom it would be known 
only as a name of locality is necessarily small. 

Taking all the facts into consideration, it cannot 
be said that this is one of those words in which the 
geographical meaning predominates. On the con- 
trary, its arbitrary meaning is so prominent that 
it would be understood by the purchasing public 
as an arbitrary word designating origin or owner- 
ship, and this conclusion is rendered more certain 
by the fact that applicants' business is not located 
ill any place called Aurora, but in New York city. 

The decision of the Examiner of Trade-Marks 
that theword "Aurora" is unregistrable because 
geographical in meaning is reversed. 





^O.^T::^ // 



OOMMISSIONEE'S DECISIONS; 



/o-^.^. 'y^^ 



OOMMISSIONEE'S DECISIONS. 



)% 



Ex PARTE WHITMAIf GROCERY COMPANt. 
Decided June 30, 100.:. 
Trade-Mark— "MtNi-TE" for Copfek— DEscntPTivE. 

The word -'Minute" should not ba reyisterai as a trade- 
mark tor malted cereal coffee, since it is doscriptiveot a qual- 
ity or characteristic of the coffde, meaning that it is of such 
a character as to be prepared for use in a minute. 

On appeal. 

TRADE-MARK FOR .MALTED CEREAL COFFEE. 

Application filed April 38, 1903, No. G5,C83. 

Mr. Ellis Spear for the applicant. 
A LLEX, Commissioner: 

This is an appeal from a decision of the Exam- 
iner of trade-marks refusing to register the word 
"Minute " as a trade-marli for malted cereal coffee. 

Registration has been refused because, in the 
opinion of the Examiner, the word is descriptive of 
a quality or charaeteristic of the goods, meaning 
that tlie coffee is of such a character as to be pre- 
pared for use in a minute. 

T^hfedeeLsion' of the Examiner was right and is' 
in accordance with tlie decision of tlie circuit court ' 
of appeals in tlie case of BeiinHt et al. v. MoKinley ' 
etal., (G.jFed. Rsp., 505,) inwhicli it was held that— 

the word "Instantaneous" is not a valid trade -mark, as ap- 
p ed to a preparation of tapioca which is distinguished from 
■■Ihei- preimratMns of that article by reis.>n of it.^adaptabUitv 
or imniadiata use. Nvithout tliH nmlimiivo.,. .^i..iH„» Ji .V.:„ri'v.? 



for imniafliata use, without the'p'relimi'uarv 
Cher preparations. (Syllabu.s.) 



soaking required by 



The decision of the Examiner of Trade-Marifs-is 
"fflrmed. 



Ex PARTE Rkbixa Mosic Box Company. 

Decided July 3, inra. 

1. LV3EL— OOUMISSrOSER OF PATESTS DlTEaMISES L VW-^ULVE 5S . 

The Commissioner of Patents is authorized and required to 
determine whether the thing presented for registration is a 
label and complies with the requirements of the law. Ho is 
not required to register everything which is presented and 
called a label. 

3. Same— McsT be Descriptive 4^ Well as Artistic. 

A label to be registrable in the Patent OUiee n^ust not onl.\' 
possess artistic msrit, but must be desoriptive o£ the a,i'ticlu 
for Tyl^ich it is used. 

8. Same— Fba Article op Manufacture — Descriptive. 

A mere statement by the apphcant for registration tli.al ho 
intends to use the design presented upon a particular article 
Of manufacture does not make it for that article within tlic 
meahing of the law. The indication of the article must ie in 
the label itself. 

^. Same— Registrability Determined by Intrinsic Qualities. 

The registrability of a label must be determined by its in - 

trinsic qualities and not by some possible or contemfilated use 

of it. ■ 

! !■ : :> 

On appeal. 

label FOB MnSIC-BOXES. 

Application filed Aprils, 1B03, No. 3,701. 

Messrs. Briesmi <£ Knauth for the d,pplicant. 
AliiEN, Comm'issioner: " >■ 

This is an appeal from a decision of the Exam- ' 
iner refusing , to .register a label entit.ed ' Regina " 
to be used for (music-boxes. 

It is admitted that th« label presented for regis- 
tration is aii JEAell^otual and artistic production; 
but registration has been refused be^'ause there is 
notJ>ing about it which indisates that i^ i§ yised on 
musie-boies. * 

It is contended by appellant that — 

tht statute lias not defined what shall be cons;dered a label 
whether it shall be a picture or a writing; whetlier it shall be 
descriptive of the article to which it is affixed; or whether it ! 
may be a mere arbitrary design — 

and that therefore the Commissioner must regis- 
ter a label though it may not be descriptive. This 
contention is based upon the decision of the Su- 
preme Court of the District of Columbia in The 

United States, ex rel. Schumacher ,y . Mcrhle, Com- 
missioner of Patents, (3 Mackey, 33.) In this case 
the court, after stating the matter quoted abovci 
said: 

If the applicant presents it as a label, and appea's to the Com- 
missioner to give it the protection which tlie law provides for it 
as a label, the duty of the Commissioner is to register it. and in 
doing so he gives it only tlie protection which th.^ statute pro- 
vides. * * * With the character of the device the Commis- 
sioner is not at all concerned. His function is as purely min- 
isterial as it is capable ot being. 

This indicates that the Commissioner is not to 
exercise discretion, but must register anything 
■yvhich is preserited as a label. The later decision 
by tlie same court, however, in the case of Utiiled 
States, ex rel. Moodie, v. Butterworth (3.^ O. G. 97 1 
is ample authority for the opposite conalu.sion. 
The court there held that the Commissioner is re 
quired to determine whether or not the thing pre 
sented i.s a label and in this must exercise diseie 
tion. He mukt determine whether cr not it i.s n 
trade-mark, as wa^ d'ollo in that case, a^id it .seems 
equally true that he miist determine \Vlietli,er or 
not it is used — ' " 

for any otli^r ar^^lcle of momifacture- 



Jt- ■ 



1 



r 




/h o. a:j,^^ <^o ^^ 






281 



since section 3 of the a'cit or June |s; 1.3:4, giygg jiim 
authority fo regist'er on-'y s^sh pri.its or labels as 
are — '■..,, . 

to be.used for any otl^er articles of manufacture. 

Under this statute all.other engravingsrcnts, and 
prints consisting of— . » 1 , , u 

pictorfnl iUustrations or works connected with the fine arts- 
are td m Te^ist*ed brthetibrarianof Confess 
und^r the general copyright lg,w. '' 

It seems clear from stat^icentsmade by the Su 
preme Court hi'Siggins^^et ah v. Keuffel et al 
^5 0. G., 1139) that a label to be registrable in this 
Offlep must, aside from other considerations be 
descriptive of the articlefor which it is used ' In 
that case the Court said, speaking of the clause of 
the Constitution under which Congress is author- 
ized to legislate for the protection of authors and 
inventors: 

ni45frrfhrthrar?fJfe??«Ulih^Xra^^ 

■' The word " label '• itself necessarily implies that ' 
It is descriptive of the article to which it is applied 
and this Office has held that a pririt or label can- 
not be held to be "for any other article of manu- 
facture " within the meanmg of the statute unless ,■ 
ft indicates that article. {Ex parte Moodie, 28 
p. G., 1371; exparte Mahn, 82 O. G., 1210; ex parte 
Jiarnhart Bros, and Spindler, 87 O G 3118- ex ' 
parte Bqlh 98 O. G., 3386.) The indication must \ 
J)e in the print or label itself and not merely in a I 
.statement ma^e by the applicant accompanying 
Jt. The print or label is thp thing which is regis- 
tered, and its registrability must be determined by . 
Its intrinsic qualities an4 not by some possible or 
contemplated use of it. All of the pictures regis- 
t3red by the Librarian of Congress and the arbi- ] 
trary designs patented under the design law mjght ' 
be applied to china or other arti:les as omq.men- 
tations thereof; but a mere statement by the ap- '. 
pjicant that he intended to so use them would ' 
clearly not warrant this Tffice in registering them ' ' 
IS labels for the articles mectioned. If such a ' 
statement of use by the applicant were permitted ' 
;o determine whether the alleged print or label ' 
ihouid be registered in this Offlje or in the Library .' 
)f Congress, the distin 3tioii at tempte i to be drawn 
)y Congress between the two classes of artistic pro- 
luetions would be ntiliifled. 

It must be held that a label to be registrable in 
Ins OfiBce must not only possess artistic merit, but 
oust be deseriptite of the article for which it is 
ised. 

The alleged label in this case is said by the ap- ' ' 
hcant to be for music-boxe?; but the label itself 
03S not indicate this. It is mere' ^ an arbitrary 
rnamental design havr'ng the v-rd "Sen-ina'' 
lereon and mi-ht vrry apprcpriatsly be u"ed as ■' 
trade-mark for varioas articles. 
The decision of the Primary Examiner is af- 
fined.. 



'*3il^'- 




COMMISSIONEE'S DECISIONS, 



5- 



Ex PARTE Star LoTio^f Rejiedt CojiPAUfY. 

Decided Septeniber 6, 1!)BS, 
i. TnAna-MABSS- -Facsimile— Descriptive Words. 

Where the facsin i;e of a tradem.>tk icclxidcs cerfa'n arll- 
trary symbols and the representation of the sea having printed 
thereon the word "Lotion," Held that the word "Lotion " be" 
ing descriptive forms no part of the mark and should be re- 
moved. 

8. Same— Drawings— DESCKinivE Words Not Ixclcded. • 
A descriptive word cannot be made a part of a trade-mark 
by association with arbitrary symbols in the ordinary way, 
and therefore the drawing of the application should disclose 
only the arbitrary symbols. 

3. Same— Same— Parts I.vsepabable. 

A descriptive word should not be retained in the drawing of 
a trade-mark application unless its parts are so interwoven 
with the arbitrary parts of the mark as to become an insepa- 
rable part thereof. 

APPEAL from Examiner of Trade-Marks. 

, TRADE-M.VRK FOR TOPICAL REMEDIES. 

Application for registration filed May 3, 1903, No. 

G5,723. 

Mr. Emit Starek for the applicant. 
Allest, Commissioner: 

. This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the mark 
claimed for the reason that the facsimile filed in-, 
eludes the descriptive word "Lotion." 

The mark was described in the original applica- 
tion as follows: 

Our trade-mark consists of the representation of a bit of sea 
with choppy waves, with the sun partially submerged below the 
liorizon, the whole inclosed by a circular border. At either end 
0: the horizon is a sail-boat. The sun has emanating from its - 
surface, two sets of rays, a long set alternating with a short set, 
each ray termmating in a star, the latter being disposed in two 
distinct semicircles. Over the waves and conforming to the eon- 
tour of the sea-surface is tlie darkened outline of the word " Lo- 
ti >n." Across the body of the sun is the word '• Star." 

The Examiner said in his letter of June ."j, 1902: 

The word "Lotion" is descriptive and cannot be included in 
the description of the mark itself or in the illustration thereof. 
Manifestly descriptive words cannot form a part of a mark. 

The word "Lotion" is undoubtedly descriptive 
of the goods upon which the mark is used, and it 
is well settled that a descriptive word cannot con- 
stitute a valid trade-mark. It is furthermore set- 
tled that such a word cannot be made a part of a 
trade-mark by association in the usual way with 
arbitrary symbols. {Exparte Tabor, 90 O. G., 103G; 
exparte Holophane Glass Co., 100 0. G., 43C.) ' 

In most eases the arbitrary symbols alone con- 
stitute the mark and should be alone disclosed in 
the drawing; but, as indicated in ex parte Tabor, 
it is possible to produce a descriptive word in such 
a'wa^^'S.ha Es^fJSiatfe it .with the arbitrary symbols 
in such a manner that it forms an inseparable part 
of the arbitrary mark. In such case the word can- 
not be omitted without changing, the appearance 
of the mark as a whole, since it constitutes an ele- 
ment of that mark. To have such effect, however; 
there must be something more than merely print- 
ing the word on or in connection with the arbi- 
trary symbols, as any one would have the right to 
print it. Its parts must be so interwoven with the 
arbitrary -paxts of the mark as to become an insep- 
a-.ablepalt thereof. It is believed that the word 
"Lotion" as it appears in this case is not a part of' 
the mark and should not be permitted to remain 
in the facsimile. 

The decision of the Examiner of Trade-Marks is 




^ r ■" ■ -TO- 



TT 



COMMISSIONEE'B DECISIOHS. 




Ex rAKTE ROYA.L T^Iir-DiciXE CoMPA::jr. 



141 



b3d33r.-ipliv.;of LUj 



1 rRIN-T3-Ml-ST DS DES^BiPnVE. 

A p-.iot in o;\Ur to Ij^rJS'.sti'.VjU np' 
ai-tiol!; wlv-ch it is iatsu-loi to aJvertjia, 

n Pa.N-Ta AN-D Labels— D?;,"?-ipt:vz. 

"• ^;S a^ i lab.U ara ru J3 r3s:.t.'.l.:3 IV t!n sam. 33.t.on 

lJ»3 ar:l-.i9 t>w:aijl. tUjy rafoi- apD-m to bD*. 

OX appeal. 

pr.-.ST Foa p.iopp.iErAivv 5iedi2:ks3. 

Appacatioa-flloA.Jily 3J, 1933,- No, 3,195. 

iLT/-. F. 17. '?»i/ift, J^-., forili3 applicant. 
AtLKX, CommUsioner: , „ 

ThU is aa appeal fr.^ni th3"a3:iil3a of ths Eiim- 
iiiDi- rofasia^ to rsslstcv a pviiit entitled "Bisqio 
DcU" to b.' us3i for adifertidiis puvp3S93 for pro- 
prietavy msdicir.es. . _ . 

• A'jstitedintiieepecificatloii— _^ 

The Examiner has refuacd rosifiyatiou on the 
groimd that tb.e Qjnies of tlie print filed are not 
de--eviptive of medicine and cites in support of this 
holding the decision ex paite Regina Music Box 
Cow (jany, (too O. G.,lil3.) 

Tlie appellant adiujts'that this piunt is not de-.». 
scriptivi3 of any mectxine, but insists that it is not 
necessary in order to warrant the registration of 
a print for said print to be dcgcripti«> of the arti- 
cles adveiftsed. ^ 

The decision relied upon by the Examiner is ap- 
proved by the appellant; but it is argued that said , 
decision does-not here applj', as the registration 
of a label was there considered. 

Prints differ from labels- only in name and use.. 
Provision is made in the same section of the stat- 
ute (seetion a of the act approved July 18, 1874, , 
18 Stat. L., p. 78) for the registration in the Patent 
Office of both prints and labels. A label is used 
on the article referred to and of which it is de- 
scriptive, and a print though deseriptive of the 
article to <^rhich it refers must riot be borne on the 
said article. These bohig the only differences be- . 
tween the two, the doeti-ine announced in ex parte 
liegina Music Box Company applies to this case. 
In fact, said decision did not make a distinction be- 
tween prints and labels, for it was therein stated— 

the i-.tlicaHon must be in the print.orlabe! itself aiKl not merely 
in a 3tatm':nt m;nJeby the applie.^nt a-.---omp.anymg it. 

In support of the doctrine announced in said de- 
cision the decision ex parte Barnhart Bros, and 
Spilidler (Sr O. G., 211S) was referred to with ap- 
proval, in. which latter deci.sion a "jyrint" alone 
was considei'ed. 

The decision of the Examiner is affirmed. 



/Ci.of z^f 



OdMMISSIONEE'S DEOISIONg- 



Ex PARTE Booth. 

llecided September 54. 1903. 
Label— Artistic Production— Work of TrpE-SETTER. 

A label comprising a red Greek cross surrounded by a yel- 
low circle as a centerpiece and a column of descriptive matter 
upon each side, Held not registrable, since it does not involve 
an exercise of the creative powers of the mind, but merely the 
work of the type-setter. 

On appeal. 

LABEL FOR NOSE AND MODTH WASH. 

AppUcation for registration filed by Thornton S. 
Booth April 30, 1903, No. 3,804. 

3Ir. John S. Buffie for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Labels refusing to register a label entitled 
''dri-Na-Si" on the ground that it is not an ar- 
tistic production. 

The label is described by the Examiner as fol- 
lows: 

The label comprises a rectangular sheet of paper having cen- 
trallj' arranged thereon the representation of a red Greek cross 
surrounded by a greenish-yellow circle on whicli appear the title 
and the name of the goods, and on each sid6 of this circle appear 
the directions for use, etc. 

The question whether or not this label is an ar- 
tistic production, such as to entitle it to registra- 
tion under the law, and not merely a production 
involving only the expected skill of the ordinary 
type-setter {Riggins v. Keujfel, 55 O. G., 1139) is the 
only one presented for decision by this appeal. 

It is believed that no exercise of the creative 
power was required in the production of this label. 
Its parts are symmetrically arranged, but that is 
the work of the type-setter. While it may be true 
that the circle and Greek cross forming the center- 
piece of the label do not come in the ordinary font 
used by type-setters, it is nevertheless common to 
print such crosses and circles, and the ordinary 
type-setter would know how to do it. It is be- 
lieved that no genius of tlie designer was necessary 
to produce the centerpiece of the label, and the re- 
mainder is clearly the work of the ordinary type- 
setter. 

The decision of the Examiner of Labels is af- 
firmed. 



'»> 



i V 



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^ 



COMMISSIONER'S DECISIONS. 



E'X PARTE Small. 

Decided September is, 1902. 

1. Trade-Marks— Description of Modificatioxs. 

A statemsnt in tlie description of a trade-mark application ■ 
setting forth what changes maybemadeinthemarlcas shown 
in the facsimile without destroying its identity will not be per- 
mitted. 

2. Same— Scope of PROTEcnoN'- Questios for Courts. 
A Parties will not be permitted to define in the description 

1 their understanding of the scope of the protection which will 
fba afforded by their trade-mark registration, since that is a 
j matter for the courts. 

I OivT appeal. 

TRADE-MARK FOR GROCERIES. 

Application for registration filed by P. A. and 
S. SmaU June 19, 1901, No. 63,630. 

Mr. William M. Fairfax for the applicants. 
Allen, Comynissioner: 

Tliis is an appeal from the action of the BxaTn,- 
laer of Trade-Marks refusing to register a trade- 
mark -which is described as follows: 

Our trade-mark consists of the fanciful word " Pearlicross." 
This his been arranged as shown in the accompanying drawing, 
in which the word appears in heavy block type, but this ar- 
rangement and style of type are not essential, and any other 
may be adopted without changing the character of the mark, 
which consists of the arbitrary or fanciful word "Pearlicross." 

The Examiner regards theword "Pearlicross" 
as registrable, but objects to the above description 
as including unnecessary matter "which should not 
appear in the specification which is printed. He 
states that the first sentence of the description is 
all that i§ necessary and is all that should be re- 
tained. 

This ruling by the Examiner is correct. The 
statement that the mark consists of the word 
"Pearhcross" is not a limitation to a particular 
style of printing it, and any attempt to define "what 
changes could be made in the mark as shown with- 
out destroying its identity has the effect of usurp- 
ing the functions of the courts. The applicants ^^ 
are not required to state that they desire protection 
only upon the mark as printed in the facsimile, 
and, on the other hand, they cannot be permitted 
to define in the description their understanding of 
the scope of the protection which wUl be afforded 
them by their registration. 

The decision of the Examiner of Trade-Marks is 
affirmed. 






V. 



•3^S^-^W'- 



UOMMISSIONEB'S DECISIONS. 

BaODBBICK AND BASCO.AI RoPE COMPANY 

Leschbn and Sons Rope Company. 

Decided September 10, ISCS. 
1. Tbade-Mark— Intehferexce— Date of Adoptiox and Use 
SET nr TS' Stateuent— "Weight Given to Testisiont Sho^w- 
INC Earlier Use. 
"Whej'e 8. certain date of adoption and use of a trade-mark is 
set up in the statement and declaration filed with an applica- 
tion '.or registration and the testimony offered in the interfer- 
ence proceeding shows an earlier dace. Held that such testi- 
mony may be considered and such weight given to it as may 

. bp 'proper under the circumstances of the case. 
p 

Same— Same— Amexdmext to Statement After Determixa- 
TIOX OF Ixterference. 
A motion during the progress ot a trade-mark interference 
to amend the statement in the application as to the date ot 
adoption and use is unnecessary and will be denied. Amend- 
ment may be made after the conclusion of the interference. 

Appeal on motion. 

TIUDE-MARK FOR WIRE ROPE. 

Application of Eroderick ^aid Baseoia Rope Com- 
pany filed October 31, 1900, No. 63,034. Registered 
trade-mark of A. Leschen and Sons Rope Com- 
pany, dated December 4, 1900, No. 35,553. 

Messrs. Higdon & Longan and Mr. Robert P. 
Haines for Broderick and Basccm Rope Com- 
pany. 

Messrs. Knight Bros, for A. Leschen and Sons 
Rope Company. 

Allen, Commissioner: 

This is an appeal by the Broderick and Bascom , 
Rope Company from the decision of the Examiner 
of Interferences denying its motion to file a sub- 
stitute statement and declaration and granting the 
motion of A. Leschen and Sons Rope Company to 
take surrebuttal testimony. 

Priorto the decision of Sherwood v. Horton, Cato 
and Company, (81 0. G., 3018,) rendered by Mr. 
Commissioner Duell on May 33, 1898, Rule 13 of the 
rules adopted by this Office for the registration of 
trade-marks contained the following provision: 

* * * Each applicant and registrant will be held to the date 
of adoption alleged in the statement filed with his application. 

The rules have since been revised, and those now 
in force do not contain this provision. 

In the decision of Sherwood y. Horton, Cato and 
Company (84 O. Gr., 3018) it was held that testimony 
offered to show an earher date of use than that 
alleged in the statement filed with the applica- 
tion — 

may be considered and such weight given to it as may be proper 
under the circumstances of the eaae. 

This practice is approved. If it was warranted 
in view of the rules in force at the time the deci- 
sion was rendered, it is warranted now. 

No good reason appears why the interforenee 
should be transmitted at this time for the purpose, 
of permitting an amendment to be filed. Such a 
course would only result in further delay. An 
amendment can be filed after the determination of 
the question of priority should priority be awarded 
to the Broderick and Bascom Rope Company. 

In considering the motion made by A. Lesjhen 
and Sons Rope Company for permission to take 
surrebuttal testimony the Examiner of Interfer- 
ences very properly said: 

Inasmuch as the full consideration both of the testimony ob- 
nected to and of any surreljuttal testimony which may bo taken 
will naturally be deferred until the final "hearing, it is believed 
that it would be but equitable to allow the taking of surrebut- 
tal testimony by the senior party, " the propriety of the evidence i 
presented"' being considered at the final hearing. I^Talboi v, 
ilfo(ie«, 74MS. C. D.,p. 1.) 

The decision of the Examiner of Interferences is 
affirmed. 



/^OO 



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vo rv. 



/ 



COMMISSIONER'S DEOISIOSS. 



/d/.^.A.^d 



COMMISSIONER'S DECISIONS. 



/. 



Ex PARTE St. Louis Candt Compant. 

Decided Stpte,mher S4, ma. 
Trade-Marks— " Perfection "—Descbiptivb. , 

" Perfection " as a trade-mark for capdy refused registration 
on tlie ground tliat it is descriptive. 

On appeal. 

TRADE-MARK FOR CANDY. 

Application for registration filed May 11, 1901, 
No. 63,354. 

Messrs Carr & Carr for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the word 
"Perfection" as a trade-mark for candy. 

Any manufacturer is entitled to refer to his candy 
as the perfection of the candy-maker's art or the 
perfection of candy, and it is believed that the 
■word ' ' Perfection " in connection with candy would 
mean to the ordinary purchasers that it is the best 
candy which can be made. It would be understood 
by them as describing the style, grade, or quality 
of the candy and is therefore not capable of ex- 
clusive appropriation as a trade-mark. 

The decision of the Examiner of Trade-Marks is 
■affirmed. 



v^ 




Carey v. The Ne-w Home Se^vving Machine 
Company. 

Decided October n, 1901. 

1. Trade-Marks— Priority— Use by Third Party. 

The question of priority in a trade-mark interference is not 
affected in any way by testimony tliat some tliird party was 
the first to use the mark. 

2. Same— Same— Ex Parte Qdestions. 

The question whether some third party is the owner of the 
"mark will not he considered in the interference, but is an ex 
parte matter for subsequent determination. 

On appeal. 

t , *,. sewkg-machixes. 

.* Application of EUa J. Carey filed December 8, 
1900, No. 63,348. Application of The New Home 
Sewing Machine Company filed February 9, 1893, 
No. 41,113. 

Mr. Clayton E. Emig for Carey. 

Mr. Charles F. Bane for The New Home Sew- 
ftjg Machine Company. 
Allen, Commissioner: 

This is an appeal by Carey from a decision of 
the Examiner of Interferences awarding priority 
of adoption and use of the trade-mark in issue to 
The New Home Sewing Machine Company. 

Carey, the junior party, filed her application for 
registration December 8, 1900. She does not al- 
lege, neither does the testimony taken in her be- 
half establish, use by her of the trade-mark in issue 
prior to January, 1898. 

Bacon, the witness called in behalf- of The New 
Home Sewing Machine Company, testifies that the 
trade-mark has been used by said company con- 
tiiluovlsly since the year 1885i His testimony as to 
this fact is convincing. 

It is sought by counsel for Carey to show that 
the mark was used by others prior to the year 1885, 
the date of use established by Tlie New Home 
Sewing Machine Company. This tliey have failed 
%o do. Even though the mark had been used at 
'^fiat time by others the f a6t woultfliot in Ahy^way 
affect the question of priority of use as between 
■ the two parties to this interference. 
"'■■" It follows, therefore, that priority of adoption 
and .use should be awarded to The New Home 
&sWing Maeiiifie'CSiiipany, 

Counsel for Carey submits on this appeal reasons 
why in his opinion the mark is not registrable. 

To a large extent the same arguments were pre- 
sented ia a protest against the registration of the 
mark filed by him prior to the final hearing on the 
question of priority. , 

Under date of October 16, 1901, in considering 
this protest it was said: 

The protest will not now be passed upon, but is referred to 
t he Examiner of Trade-Marks for ejc parte consideration, after 
the interference is concluded: If he is of the opinion that in 
view tliereof the trade-mark is noi rcRistrable.he will reject the 
application; otherwise no action on his part will be necessary. 



; The decision of the Examiner of Interferences 
awarding priority of adoption and use to The New 
Home Sewing Machine Company is afflMned. 



;sM 








EXPARTET INO MeDICIXE COHPANT. 
Dacided Ocfuber U. 1302. 

1. TRADE-MABSS— INO Af<D L'mO— REGISTBATIOS EKFTJ3ED. 

The word "Ino" as a tiVide-mark for liver-tablets refuse! 
registration upon "Uno'' for medical compounds in solid or 
liiuid form. The words ressm'jle each other in appsarauss 
and suggest the same idea. 

8. SA5I3 — RSGISTRiTION EVIDSXCS OF Ownehship — GtESEHIC 

Ci/Ass OP Goons. 

The registi'ation of a trade-mark is under the \a-w prima facie 
evidence of ownership, and where the registered mark is said 
to have been used upon a class of goods, HeM that substan- 
tially the same mark e.mnot be registei'ed for another for 
goods coming? under that class in the absence of a showing 
that the registrant has not usei it upon the particular goods. 
3. Sa:is— CoAS3 OF GtJODs— Asric!.3 5 0? DiPFEtiENr Foasi. 

"Where a mark has-been isssd upon one form of liver medi- 
cine, Held that it cannot be registered to another party tor a 
diftercnt form of liver medicine. The class of goods is the 
same. 
4. Same— IXTEEFECESCE— Statement as to Date of Use. 

AVhere a party's statement of the date of use of liis mark 
does not overcome the date of another party's registration. 
Held t'aat he is not entitled to an iriterf 6rence. 

0:n^ appeal. 

TRADE-5IAEK FOR MEDICINES. 

ApiiHcation for registration filed l>«cember 36, 
1901, Wo. 6-1,741. 

3Iessrs. R. 8. & A. B. Lacey for the applicant. 
Allejt, Coinmissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade-Marks refusing to register the 
■word "Ino" as a trade-mark for kidney and liver 
tablets in view of the prior registration, No. 33,916, 
dated December 19, 1899, of the word "Uno'' for 
medical compounds, in solid and liquid form for 
internal and external application. 

The applicant contends that the words are so 
different that they will not confuse the purchasing : 
public and that the classes of goods to which they 
are applied are so different as to warrant segistra- 
tion. 

The marks when printed are very much alike in 
appearance and each when read Suggests substan- 
tially the same idea to the reader. It is believed 
that they so closely resemble each other as to de- 
ceive purchasers. 

' The statement of the class of goods to which the 
registered mark has been applied is not so specific 
as is the applicant's statement, but it is broad 
enough to include the particular goods there men- 
tioned. The registration is under section 7 of the 
act of March 8, 18S1, prima facie evidence of 'owner- 
ship by the regis.trant, and therefore in the ab- 
sence of a showing that the registrant has not used 
hismark upon goods of the same class as the par- 
ticular goods mentioned by this applicant the ap- 
plication for registration must be refused. No suf- 
ficient showing as to that matter has been made. 

This appellant suggests in its brief that it is eil- 
titled to an interference with the registered mark 
if the two are regarded as substantially the same; 
but it is noted that its statement as to the date of 
use does not overcome the date of registration of 
the word "Uno." It appears, furthermore, upon 
this appellant's own showing that the registrant 
uses his mark upon liver medicine, although that 
medieiae may be ijut up in different form, and 
therefore the Exammer rightly held that there is 
no sufBcient suggestion of a difference in the class 
of goods to warrant an interference to determine 
that question. 

The decision of the Examiner of Trade-Marks is- 
affll'med. 



/• 




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/o/ a^f^ ^ ^ ^ 



COMMISSIONER'S DEOISIOITS; 



/> 



Ex PABTE SPOCT.. 

Decided October 10, 190S. ___„.^''' 

I Tbade-Marks— Picture "op;Goods Not Registrable. ' J^f^ 
A picture ofgoods of the class upon which it is use J cannot 
bo registere^^a trade-mark, although it may not b« a pic- 
ture of the particular form of goods sold by the applicant 



On appeal. 



\ 



TRADE-MARK FOR CORN-PLASTERS, ETC. 



Application of Jacob Spoo for registration filed 
AprU 14, 1902, No. 65,564: 

Messrs. Barthel & Barthel am^M. C. Emrt& Co. 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register a mai-k 
consisting Of a pictorial representation of goods of 
the class to which it is applied. 

It is well settled that a party cannot obtaia 
trade-mark protection upon the mere form of the 
article sold by him. (Davis v. Davis, 27 Fed. Rep., 
490; Adams v. B/eisel, 31 Fed. Rep., 279.) A pic- 
torial representation of an article is one of the best 
means of describing it, and it is well settled that 
marks which are merely descriptive are not regis- 
trable as trade-marks. 

While it may be true that the mark in this ease 
is not a picture of the particular corn-plaster sold 
by the applicant, it is nevertheless a picture of one 
form of corn-plaster and for that reason cannot i e 
exclusively appropriated by any person. 

The decision of the Examiner qf Trade-Marks is 
affirmed. 








287 



TJNITED STATES PATENT 0J7IGE. 



./^ 



Ex parte St. Louis Oandy Company, 



MS.D. Vol. 74, Page 497. 



Trade-MarX fnr Candy. 



Petition for Rehearing. 



Application for registration filed May 11, 1901, No. 63,354, 



Messrs. Carr & Oarr for applicant. 



This is a petition for a 2?ehearlng in the above-entitled oase. 
When the decision of September 24, 190S, was rendered, the fact v^as 
not overlooked that the word "Perfection" was printed "in white 
capital letters upon a field of red". The style of printing was 
not and is not regarded as of consequence, the essential feature of 
the mark by which customers would identify the goods being the v/ord 
perfection . That v/ord is not regarded as registrable, and there- 
fore the mark as a whole is not. 

The petition is denied. 



(Signed) F. I. Allen, 

Commissioner. 



October 27, 1902. 



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■ '^'j yffr- • ' 



COMMISBIONEE'S DECISIONS, 




n-'. //. DmIMU & Son for Galena Oil 



Galen'a Oil Company t. W. P. Puller & Co. 

Decided November 7, lOOS. 
.. TRADE-JLvnKs— PBioaiTv OF Use— EcjuivALENT Marks— Star. 
A nvc-pyinted stai- is the equivaleiit pt a six-pointed star as 
a trade-mark, and tlieretore tlie ust o£ a flve-pointed star 
proves priority as to an issue relating to a sis-pointed star. 
3. Same— Same— DiFFEREXT Stars are Euhivalents. 

Tlie use of a fire-pointed star as a trade-marlc for certain 
goods estaljlislies tlie user's right to a star, broadly, and no 
one can subsequently acciuire the right to use a six-pointed 
star upon the same class of goods! 

Appeal from Bsamiaer of Interferences. 

TKADE-JIARK FOR OIL", 

Application of Galena Oil Company filed Sep- 
tember 4, 1901, No. 04,077. Trade-mark of W,,.?. 
Faller & Co. re.gistered October 10, 1897, No. 
30,716. 

llessrs. 
Company. 

Mr. r. W. Johnson for Fuller & Co. 
A'LfcEN-, Commissioner: 

This is an appeal by W. P. Puller & Co. front 
the decision of the E-Karuiner of Interferences 
awarding priority of adoption and use of the 
trade-mark in controversy to the Galena Oil Com- 
pany. ; 

The issue is defliied as follows: 

Tn'o crossed triangles with tbe letter "G'' inclosed in the 
rtdilble figure thus formed, or the representation of a st.ir 
formed by placing tn-o tri,in2:les one upon the other, and the 
words ''E.xtra Star" for lubricating-oil. 

"W. P. Fuller & Co. are registrants, having ob- 
taiaed re.cfistration on Octobjr 19, 1897, on an ap- | 
l>lication filed September 10, 1893. They took no 
testimony and are confined to their record date. 
Their registration is under the law prima facie I j 
evidence of ownership and places upon their op- y 
poncnt the burden of proving the contrary. ' 

The witnesses on behalf of the Galena Oil Com- 
pany do not allege a use of the particular mark 
described in the issue at as early a date as their 
opponents' registration. Such use was not earlier 
than December, 1899. They do allege, however, 
an earlier use of a specifically different form of 
mark, which the Examiner holds to be substan- 
tially the same as that in controversy. That 
earlier form consisted of a flve-pointed star with 
the letter "G" placed thereon, and it had been 
used by the company long before its opponents 
had obtained their registration. The only ques- 
tion for detei-mination, therefore, is: Does the use 
of the flve-i^ointed star jirove priority as to and 
entitle it to register the six-pointed star notwith- 
standing the fact that some one else was first to use 
file six-pointed star? 




The Galena Oil Company is tlie ( 
ness of the Galena Oil Worlcs, and the records of 
the Office show that the Galena Oil "Works has 
registered the five-pointed star. No. 33,966, Janu- 
ary 3, 1891. The present applicant, the Galena 
Oil Company, is therefore entitled to reregister iii 
its own name the five-pointed star or any equiva- 
lent mark to which title was acquired by the use 
of that five-pointed star. 

It is believed that a five-pointed star is the 
equivalent of a six-pointed star as a trade-maric. 
The purchasing public would undoubtedly con- 
sider the mark as a star broadly in either case and 
would not examine it closely to determine the 
number of points which it had. The use of a flve- 
pointed star as a trade-mark for certain goods 
therefore establishes the user's right to a star 
broadly, and it is believed that no one can subse- 
quently acquire the right to use a six-pointed star 
upon such goods. 

It is held that the Galena Oil Company has es- 
tablished its common-law right to the use of a 
star, whether flve-pointed or six-pointed, upon lu- 
bricating-oil and that it was in law the first to 
adopt and use the marlv in controversy. 

The decision of the Examiner of Interferences 
awarding priority of adoption and use to the Ga- 
lena Oil Company is affirmed. 



I 





WW 



1 ■ 



Aw* 



oy 



/, o/.^. c^^7 7 



COMMISSIONEE'S DECISIONS. 



Hartshorn «. Philbrick/ 

Decided November IS, 190S. 

1. TKADE-MaEKS— ISTEKFEKEKCE— PKIOKITY. " 

Wliei-e it does not appear from the testimony that the junior 
party has used the trade-mark in issue to actually identify 
goods either as to origin or ownership, though he may have 
used it for other purposes, he has not acquired such a right 
in the mark as the Patent Office can take cognizance of under 
its jurisdiction relating to the registration of trade-marks, and 
priority mtist be given to the senior party. 
S. Same— Advertising Goods Under Name— Attaching Name 
TO Goods. 
Where a party advertised goods in a paper or periodical un- 
der a certain name, but there is no evidence that he ever at- 
tached the name to the goods themselves, so that they could 
be identiflod as to origin or ownership. Held that he has not 
established his right to the name as a trade-mark. 

On appeal. 

TBADE-MAEK FOR EMBROIDERY MATEEULS. ^ 

Application of William N. Hartshorn filed De- / 
^^inber 10, loOO, No. 63,201. Trade-marli of Halsey'-;,. 
:B. PHilbriok registered Mar,(;li.,13, 1900, No. 34,308. 

Mr. A. B. TJpham for Hartshorn". 

M^$^si:s:J'eh7eiifs. cfe BarJter for Philbricls. 

Allbi^, Commissioner: 

This is an appeal by Hartshorn from a decision 
of the Examiner of Interferences awarding prior- 
ity toPhilbrick on the trade-mark "Priscilla" as 
applied to embroidery - hoops, embroidery -hoop 
holders, embroidery sets, and stamping-powder. 

It appears from Hartshorn's testimony that he 
is now and has been since 1894 the publisher of a 
magazine devoted to art needle-work and home 
decoration, styled the Modern Priscilla. A num- 
ber of volumes of this magazine have been offered 
in evidence, and certain advertisements appeajr 
therein, among which are the following: "Priscilla 
Stamping Outfit No. 3," "PrisciUa Instruction 
Books," and "Priscilla Embroidery Frame and 
Holder." Hartshorn testifies that these advertise-j 
ments refer to goods manufactured by the Priscilla' 
PubUshing Company and books published by 
them, all of which articles are sold by the said com- 
pany. The only other testimony o.ffered by Harts- 
horn is that of Helen Amidon, who testifies that she 
is now the editor of the Modern Priscilla Magazine 
and that formerly she had charge of the sales de- 
partment of the Priscilla Publishing Company. 

It does not appear from the testimony how the 
sales of this company are conducted ; but it is stated 
in the brief filed by Hartshorn that the Priscilla 
Publishing Company carries on its business- 
through the mails— i. e., it conducts what is comr 
mercJMly knownas a "mail-order" busineas. 




ItcFoes not aff rmatiyely aptjB.ar that this com- 
p£fEevers£a^c>f,€heg.od,ab<^.r^e4 

to although it is contended by counsel for Harts 
I vn that it should be inferred that it has sold said 
Ss^r' i tJe fact that the said goods havebeen 
continury advertised for along period of years^ 
Isl^^ng that the Priscilla Publishing Company 
hasTldLme goods of the character advertised, it 
does not appear that said company h^**er ap- 
plied the word "PrisciUa" as an identifymg-mark 

^^CotnSt: Hart-shorn contends, however, that 
this is not necessary, stating that-- , 

« trade-mark applied *« ^VfS-o'rt^fbusmts^sTpelK 
tljereof is, for all purposes of ,to^ne°My article itself. Th^t Id 
=?tfa^pea£c°eTpon&"oiru;^dersuchcirc«mst^ilc^ 

is a mark of supererogation- 

Hartshorn's contentions are not believed to be 
sound, since the exclusive right to a trade-mark 
arises from the adoption and use of the mark m 
identif ymg certain goods either as to origin or own- 
ersh p, and a mark cannot identify goods unless it 
Tafflxed thereto or associated with the package 
tiontaining the goods. If applicant has any right 
to the use of the word "Priscilla," it is by virtueof 
Ms employment thereof as a trade-name rather 
fhan^satede-mark. B rozone on Trade-Marhs 
S^kes the distinction clear between trade-mafs 
and trade-names. He states on page 115, para 
irrnnb 01 in reference theretO: , . , . 

^^tShouirbeobserv^^^ 

te?ms convertibly, wlie'i*'^^,/,",,^ antagonistic. The distinc- 

erly allied to the good-will of a busmess. 

As Hartshorn has not affixed the word "Pris- 
cilla" to any of the goods sold by him, so far as 
this record shows, it is held that he bas not ac- 
quired such a right in the use of the word a this 
^fflcecantakecognizanceof under its 3urisdict on 
relatingtotlierpgistrationof trade-marks, andtiie 
decision of the Examiner of Interferences awaid- 
Lg priority t6 the registrant and senior party, 
PhUbripk, is adCordingly affirmed. 





/^/ <^,^c>yf 



OOMMISSIONEE'S DECISIONS. 



Ex PARTE P. W. Minor & Son. 

Decided 'Sowmber IS. 190S. 
Trade-Mark— Thk Word "Voodk'" for Boots and Shoes Not • 
Registrable. 
The word "Vogue " means the " mole or fashion prevalent 
at any particular time; * * * now generally used in the 
pia-ase-ui.voe^ie; as, a particular style oE dress was then in 
vogue,"' Heia therefore to be descrip;.lye wfhea apixlle(\ to an 
article of weartng-apparel and not negiptrable. 

On appeal. 

TKADE-UARK FOR BpDTS, AND SHOES. 

Application for registration, fljed June 17, 1903, 
No. (Ki,037. 

Mi: Henri/ A. Seymour for the appellant. 
Allbn, Commissioner: 

This is an appeal from tlie decision of the Ex- 
aminer of Trade-Marks refosinR to register the 
word "Vogue" as a trade-mark for shoes on the 
ground that it is descriptive. 

The Century Dictionary defines the word 
"Vogue" as meaning— 

the mode or fashion prevalent at any particular time; * * * 
now generally used in the phrase in vogice; as, a particular style 
of dress was then in voytie. 

Thismeaningof the word is well understood, and 
when applied to an article of wearing-apparel it 
Avould be regarded by the purchasing public as 
meaning that the article is fashionable. No one 
can hav« the exclusive right to say that his goods 
are fashionable or to use the word "Vogue" in say- 
ing so. 

As said by the court in Bennett v. MclCi'nhff, (G5 
Fed. Rep., .")0.">:) 

No principle of the law of trade-marks is more familiar than 
that which denies protection to any word or name which is de- 
scriptive of the qualities, ingredients, or characteristics of tlie 
article to which it Is applied. An exclusive right to the use of 
such a word, as a trade-mark, when applied to a particular arti- 
cle, or class of articles, cannot be acquired by the prior appro- 
priation of it, because all persons who are entitled to produce 
and vend articles, are entitled to describe them, and to employ 
any appropriate terms for that purpose. 

The word " Vogue" was refused registration as a 
trade-mark for shoes in the case of Pingree & 
Smith, (09 MS. Dec, 210.) That decision is believed 
to be right. 

The decision of the Examiner of Trade-Marks is 
affirmed. 






OOMMissioNEii's decisions; 



Ex PARTE KORNITZER. 
Decided November 13, 1001. 

liiBEL— ARTISTIC MeRU— WHAT Co..SrU'0i:E3.i 

Where a label does not exhibit the highest order of artistic 
merit, but presents a picture and arrangement of parts which 
involves the work of a designer rather than a type-setter. Held 
"to be founded in the creative powers of the mind" and is 
registrable. 

Qn appeal. I 

LABEL FOR MEDICINE. — 

Application of Joseph Kornitzer for registration / 
filed June 34, 1903, No. 3,040. 

Mr. Thomas P. Simpson for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Primary 
Examiner refusing to register a label entitled "Me- 
tabolin." 

The label consists of the picture of a man stand- 
ing at the side of a table, pointing at a dish of food 
placed thereon. Below the picture is printed a de- 
scription of how the medicine entitled ' ' Metabolin " 
is to be used. A broken-line border surrounds the 
picture and printing. 

The Examiner says that the label is not an artis- 
tic production and has refused registration upon 
that ground, citing the decision of the Supreme 
Court in Higgins v. Keeffel, (55 O. G., 1139.) The 
question presented, therefore, is whether the label 
presented is the expected work of the type-setter I 
or is " founded in the creative powers of the mind. " 

While it is true that the label does not exhibit 
the highest order of artistic merit, it is believed 
that its production required the exercise of the ' 
creative powers of the mind. It possesses some ar- 
tistic merit and is not "a mere advertisement or 
designation of the subject to which it is attached" 
in th6 form in which the type-setter would natu- 
rallyput H. The p^eture-and arrangement of parts 
involve the work of the designer rather than the 
type-setter. 

The decision of the Examiner is reversed. 




VOl.^l 



i 




W^:"^ 




291 



OOMMISSIOHES'S DEOISIOEB. 



Ex PARTE The a. B. Barnum Co., Ltd. 

Decided December 1?, 100?.. 
I hrade-Mark — " Pastry " Fon BAsrKG-Po"WDER — DEscRrprrvi. 
The word "Pastry " refused registration as a trade-mark £ ..■ 
baking-powder on the ground that the word would in. ioaif 
that tli3 particular baking-powder so designated was desiralu^ 
for use in ma!;ir.g pastry, and therefore it is not an arbitrary 
word when' so applied. 

Ou appeg,!. 

TRADE-MARK FOR EAKKCi-POWDER. 

Application filed January IG, 1003, Ko. G4,8C9. . 

Mr. LiUher V. 3IoicUon for the appellant. 
Alleit, Commissioner: 

This is an appeal from a decision of the Exam- 
in3r ef Trade-Marks refusing to register the word 
" Pastry" as a trade-mark for baking-powder. 

The Examiner holds that the word "Pastry" is 
descriptive of the use of baking-powder and that 
as such is not a lawful trade-mark. 

It is well known that the word "Pastry" is the., 
general name for certain articles of food and that 
baking-powder may be and usually is an ingre- 
dient of such food. It is therefore clear that the 
word ' ' Pastry " applied as a trade-mark to baking- 
powder would indicate that the ijartieular baking- 
powder so designated was desh-able for use in mak- 
ing pastry. 

In view of these facts it is held that the word 
' ' Pastry " as applied to baking-powder is not an ar- 
bitrary word and cannot therefore be lawfully reg-- 
istered as a trade-mark for baking-powder. 
. The decision of the Examiner of Trade-Marks is 
affirmed. 




xffioisiojrs. 



!EX PARTE SOHWARZSCHILD AKD SULZBERGER 
COMPAKT. 
Bedded December IS, 1901. 
^BADE-MABKs—AHTiciPiTiDS—" Silver Star." 

The words "Silver Star" Held not registrable as a trade- 
mark m view of prior registrations for the same class of good» 
including a star as the predominating and controUiDg feature. 

On appeal. 

TRADE-MARK FOB PACKING-HOUBE PRODUCTS. 

Application filed September 9, 1903, No. 66,557. 

Messrs. Dodge & Sons for the applicant. 
Allen,' Cof»«tJ#M'dner; 

This is an appeal f roffi ine decision of the Exam- 
iner of Trade-Marks refusing to register the words 

Silver Star" as a trade-mark for packing-house 
products on the ground that it is anticipated by 
the following registered marks: Ryan, No 11 Oc- 
tober 25, 1870; F. Whittaker & Sons, No. 920, July 
1?, 1872; G, Cassaes & Son, No. 1,301, June lo[ 1873- 
*". Whittaker & Sons, No. 19,103, Febraai^ 24^ im. 

Kach Of the registered marlcs contains the word 
"Star" or the representation of a staf Osed upon 
"hams. Each of them includes other features; but 
since a star is a conspicuous part of them it is be- 
lieved that the purchasing public would be de- 
ceived by the use of the word "Star" by a differ- 
ent Jnannfactu'rer upon the same class of merchan 
dise. The word " Silver" before the word " Star " 
is not sufficient to distinguish themark. Theword 
"Star" is the predominating and controlUng fea- 
ture. 

The ("^cision of the Examiner of StedA-Jffarks is 
affirrae>l. 





eOMMISSIONEE'S DECISIONS. /^^ 



Ex PASTE WSINGARTEN BROTHERS, • 
Decided December SO, 190i. 
TbAde-Mabks—"Vassar"— Ordinary-Surname. 

The word "Vassar" refused registration as a trade-mark on 
the ground that it is an ordinary surname. The use of the 
word as the name of places to perpetuate the name does not 
change the character of the word. 

Os appeal. 

TRADB-MABK FOR CORSETS. 

Application filed August 4, 1902, No. 66,356. 

Messrs. Richards <& Co. for the applicants. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam-- 
iner of Trade-Marks refusing to register the word 
" Vassar" as a trade-mark for corsets. 

Registration has been refused on the ground that 
the word is an ordinary surname and is also a geo-- 
graphical word. 

The word is undoubtedly an ordinary surname 
and the name of a few towns, and therefore the 
only question for determination is whether it has 
by other use acquired another meaning which is 
so far superior to that of a name of a person or 
place as to be regarded by the purchasing public 
as arbitrary and fanciful when applied to an arti- 
cle of trade or to the particular article .stated in 
this case. It has not been shown that there has 
' been any such other use of the word as to render 
it arbitrary or fanciful, but, on the contrary, it is 
merely the namp of a person. It has been used as 
the name of places with the idea of perpetuating 
the name of some person of the name, and such use 
clearly does not change the character of the word. 
The name of Matthew Vassar, the founder of Vas- 
sar College, is" well known, and there are many 
others of the same name. Any person of that name 
would have the right to make goods of the kind 
here described and mark them with his name. 

It is held that the mark is not arbitrary or fanci- 
ful, and therefore the decision of the Examiner of 
Trade-Marks refusing registration is affirmed. 






W^T^' 



/^<2 ^^»2-^f 



OOMHISSIOITEE'S DECISIONS. 



J^' 



I 



Ex PARTE Abingdo:?? Wagon Company. 

Decided December :0. poi. 
TKADE-MinK— Toe "Word "Clinton" Surkouxled bt An ORStA-' 
MENTAL Border— Not REr;isTi!AnLE— Geoojiapdical. 
The word "Cliaton" surroundOLl by an ornamental border 
' refused Tegisti'ation as a trade-mark tor wagons oa the ground 
that it is essentially a geoi^i-ajihical word, especially when 
used in connection with W'agons", The word "^linton" not 
being arbitrary in character is not made arbitrary by the fact 
that it is surrounded by an ornamental border. 

On appeal. 

THADE-MARK FOR WAGONS. 

Application filed July 31, 1903, No. CG,313. 

M7\ D. P. Wolhaupter for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the word 
"Clinton" surrounded by an ornamental boi-der 
as a trade-mark for wagons. 

The Examiner states that — 
registration has been refused for the reason that the word 
claimed is an ordinary surname and a geographical term and 
has no signification which in its arbitrary and tanciful sense is 
indicative of origin and ownership. 

The following statement of facts is made by the 

Examiner: 

In Lippincoft's Gaseiteer of the TForW, the word " Clinton " 
appears as the name of nine counti^ and orer sixty toivesi 
Cities and villages in the United States. Bloreover, Clinton, 
Iowa, the most prominent city of that name, is particularly 
noted for its manufacturing industries, and wagon-works are 
located at this place, and in the Gazetteer it is further stated 
that " lumber and vehicles " are chief articles of export. 

These facts are not disputed by the appellant. 
They are sulfleient, especially in view c f the fact 
last stated, to warrant the Examiner in refusing to 
register the word "Clinton" as a trade-mark for 
wagons. 

The statements in the affidavit filed by the ap- 
pellant during the prosecution of this case do not 
change the fact that the word " Clinton" is essen- 
tially a geographical word, especially when used 
ill connection with wagons. 

The word ' ' Clinton " not being arbitrary in dh&r- 
^oc'isiT jg-jM4 JJ.VO.C)." ja.rl:utj:ary by the. ,fac±JJia,t it is 
surrounded by an orna',uental bora'er. 

The decision of the Ex.aminer of I'rade-Marks is 
affirmed. 




V 





/O/.^. ^^or- 



Ex PARTE The E. I. Sherman Manufacturing 
Company. 

Decided April 16, KOI. 
1. Trade-Marks— Use of Presidbnt's Name. 

Where it appears that the word "Rose" alone has been 
used as a trade-mark. Held that the words "Roosevelt Rose" 
will be refused registration bee^use it iuvglves the use o£ tU« 
President's name. "* 

S. Same— Same— Public Policy. 

It is against public policy for this OiHce to lend its sanction 
to the use of the President's;, mime by, ^pl^USting registration 
therefor as a trade-mark witliout his express consent. 

On appeal. 

TRADE-MARK FOR iSRSe^BT SMCiALTlES AND BRTJOOISTS' SITNBWES. 

Application filed February 14, 1903, No. 65,113. 

Mr. Frederick L. Emery and Messrs. Mirie'dani 
(& Greeley for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
"Roosev6lt Rose" as a trade -mark for certain 
named grocers' specialties. 

It appears that the word "Rose" is anticipated 
by prior registered trade -marks; but it is con- 
tended by applicant that the addition of the word . 
"Roosevelt" renders the mark so specific thai 
there is no such similarity between the two marks 
as to cause confusion or mistake in the mind of , 
the public. This dissimilarity therefore must h~& 
due to the employttt^nt of the word "Roosevelt,"" 
and it is this word which would distinguish appli- 
cant's brand of goods from that to which the word 
" Rose" alone is appMd. 

It is weJ'-settled that alluring' celebrity is enti- 
tled to protection from the use of his name for pur- 
poses of trade by others, {ex parte Mclnnerney, 85 
O. G., 148; ex parte John Bewar & Sons, Ltd., 98 
O. G., 1037,) and this is especially true in the case of 
the name of the President of the United States, 
It is against public policy for this Office to lend its' 
sanction to the use ef the President's name by 
granting registration therefor as a trade -mark 
without his express consent. The mere fact that 
it has been applied to a particular rose is not suf^ 
flcient to warrant the assumption that this consent 
has been given. 

The decision of the Examiner of Trade-Marks 
was correct, and it is accordingly affirmed. 



COMMISSIONER'S DECISIONS. 



/^ 



Ex PARTE Keystone Chamois CoMPANt.' 

Decided December S3, Won. 

1. Trade-BIabks—Antioipation— Class op Goods— Chamois' 
Skin and Glazed Kid. 
Held that a trade-njark for chamois-skins tor polishing pur' 
poses should not be refused re^stration upon a prior regis- 
tration of a similar mark for. glazed kid, since the goods-are 
not of substantially the same descriptive properties and do 
not therefore belong to the same class. 
3. Same — Same — Kule of Infringement. 

The doctrine of the patent law that that which would infringe, 
if later in date will anticipate if earlier is applicable to ques;.. 
tions of trade-mark, for it involves only the question ot sub"., 
stantial identity. 

3. Same— Same— Same— Class of Goods. 

To constitute infringement or anticipation, the marks must 
not only resemble_^ch other, but must be placed on merchan- 
dise of substactiai ly the same descriptive properties. 

4. Same— Extent op Right— Goods of the Same DescbiptivE' 

Properties. 
The right conferred by a single trade-mark registration doeg 
not extend beyond the remedy provided by law, and that un- 
der sectiSn 7 of the act includes only its use upon merchanr: 
dise of substantially tBe same descriptive properties. 

5. Same— Same— Class op Goods. 

The statement of the class of ggods under section 1 of the 
act does not espand the right acquired beyond merchandise 
of substantially the same descriptive properties as the par" 
ticular goods upon which the registrant has used the mark. 

On appeal 

tradb-mabk foe chamois.-. 

Application for registration filed August 38, 1903, 
No. 66,489. 

Mr. A, (?. Du Bois and Mr. Vernon JI. Hodges for. _ 
the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the trade- 
mark desM-ibed as follows: 

The representation of a keystone upon the face of which is 
shown a running chamois with a mountainous laDdscape in the 
background. Beneath the chamois is a streamer or scroll. 

It is stated that the goods to which this mark 
is applied are chamois-skins. 

The Examiner refused registration on the follow 
ing trade-marks: Blakeslee & Darby, No. 13,044, 
February 33, 1886; Keystone Leather Co., No. 
31,161; January 35, 1898. 

The Blakeslee & Darby trade-rnark is used on 
metal-polishers, and particularly on chamois-skins 
prepared for polishing metal, and comprises a cir- 
cular field inclosing a mountainous scene, with the 
picture of a running chamois in the foreground, 
the rising sun in the background, and the words 
" Oriental Polisher, Stilboma." 

The trade-mark of the Keystone Leather Com- 
pany is used on glazed kid and comprises, as shown 
in the facsimile, the representation of a keystone 
having' thereon the words ' ' Keystone Kid " and the 
representation of a kid's head. It is stated that 
the keystone and kid's head may be omitted and 
that the essential feature of the mark is the words 
"Keystone Kid." 

When chamois-skins have been prepared for pol- 
ishing metal, and by this preparation it is presumed 
that they have been treated in some way to adapt / 
them for polishing purposes— as, for example, by 'j 
saturating them with crocus or other polishing ma- 
terial — the skins thus prepared are distinctly differ- 
ent from chamois-skins in general. In view of this 
difference and also in view of the fact that the reg- 
istered mark lacks one of the most distinctive fea- 
tures of the mark in the application — the keystone — 
the Blakeslee & Darby mark is not an. anticipa- 
tion of applicant's mark. 




^/^ 



1^x3(3 



The question of anticipatib'n by a prior registered 
mark may be tested by the question of infringe- 
ment. The doctrine of the patent law that that 
which would infringe if later in date will anticipate 
if earlier is applicable to questions of trade-mark, 
for it involves only the question of substantial 
identity. 

Considering the question of infriiagement, for the 
determination of this question it is to be observed 
that section 7 of the act of March 3, 1881, provides 

that — 

any person who shall reproduce, counterfeit, copy, or colov' 
ably unitate any trade-mark registered under this act and affli 
the same to merchandise of substantially the same descriptive 
properties as those described in the registration shall be liable 
to an action on the case for damages tor the wrongful use of 
said trade-mark at the suit of the owner thereof, etc. 

Therefore to constitute infringement the marks 
must not only resemble each other, but must be 
placed on "merchandise of substantially the same 
descriptive properties." 

In this statement of infringement we may dis- 
cover the scope of a right of trade-mark, for it can- 
not be supposed that the right extends beyond the 
remedy provided for its infringement. To hold 
otherwise would be to find a right without a rem- 
edy, a thing obnoxious to the law. 

Nor can the language of the first section of this 
act, which requires the statement to specify "the 
class of merchandise and the particular descrip- 
tion of goods comprised in such class" be con- 
strued to expand the right acquired by a single 
registration beyond the words "substantially the 
same descriptive properties " of section 7 of this 
act. Reading this act so as to give force to all of 
its provisions, it must be held that any scope of 
the word "class" of section 1 which may be used 
to describe the field within which a trade-mark is 
used cannot be relied upon to broaden a single 
right of trade-mark beyond the terms "merchan- 
dise of substantially the same descriptive proper- 
ties" of section 7. 

Between glazed kid and chamois skins there are 
many intrinsic distinctions, and although both are 
leather goods I do not think they are of "substan- 
tially the same descriptive properties." 

I conclude, therefore, that although there is such 
similarity between the mark of the Keystone 
Leather Company and applicant's mark as would 
preclude their use upon merchandise of substan- 
tially the same descriptive properties the appli- 
cant is entitled to the use of its mark for chamois- 
skins. 

The decision of the Examiner of Trade-Marks in 
refusing registration of applicant's mark is there- 
fore reversed. 




da 



V 



/^/. ^^. SSJ-yo 




^tf 



Morris v. Kobinson, Norton and Company. 

Decided December 4, 190S. 

1. Trade-Marks-Interference in Fact— Essential Featurk. 

Where one party's trade-mark application includes the word 
•' Tearabout " and the picture of two tigers and the other par- 
ty's includes the same picture and the word." Tiger," Held 
that the picture is the essential feature and that there is an 
interference in fact. 

2. Same— Same. 

Where the two marlcs of the parties are such that if both 
-,iere used in trade by different parties on the same class of 
-,,ids the public would be confused, Held that there is an in- 
■ri-ference in fact. 

Appeal on motion. 

trade-mark for garments. 

Application of Frederick Morris Qled February 
10, 1902, No. 65,066. Application of .J. M. Robin- 
son, Norton and Company filed February 13, 1898, 
No. 55,136. 

Mr. Philip K. Stern for Morris. 

Mr. E. L. McClelland for J. M. Robinson, Nor- 
ton and Company. 
Allen, Commissioner: 

This is an appeal by Morris from a decision of 
the Primary Examiner denying Morris's motion to 
dissolve the above interference on the ground that 
no interference in fact exists. 

The issue of the interference is a trade-mark de- 
scribed as follows: 

The representation of two tigers pulling in opposite directions 
upon a pair of trousers, for men's or boys' trousers, coats and 
vests. 

Both parties use the mark on goods of the same 

general class. 

The junior party, Morris, uses the word "Tear- 
about" in conjunction with the pictorial illustra- 
tion of two tigers pulling in opposite directions on 
a pair of trousers. J. M. Robinson, Norton aud 
Company, the senior party, shows a trade-mark 
the arbitrary matter of which comprises the word 
"Tiger," in conjunction with an illustration almost 
identical with that employed by Morris. 

The pictorial illustration is unquestionably the 
salient and distinctive feature of both marks. The 
illustration is what would attract the eye of the or- 
dinary purchaser, and for this reason it is the chief 
characteristic of the marks. The marks in these 
applications are clearly such marljs that it both 
were used in trade by different parties on the same 
class of goods the public would be confused, buch 
being the case it must be held that there is an in- 
terference in fact between them, and the decision 
of the Primary Examiner is accordingly affirmed. 

The fact that the mark of the senior party shows 
matter which may not be regLstrable as a trade- 
mark does not warrant a different conclusion, since 
this raises an ex parte question, the determination 
of which has no bearing on the question of inter 
ference in fact upon the common subject-matter 
which forms the salient feature in the trade-mai-k.s 
of both parties. 



/ojL.drf. 5^1? <3 



OOMMISSIONEE'S DECISIONS. 



M 



Ex PARTE Abingdon Wagon Company. 

Decided December SO, 190i. 
Trade-Mark—" Sterling "—Not Registrable— Desoriptivs. 
The word "Sterling" refused registration as a trade-inark 
for wagons on the ground that it is not arbitrary in character, 
but essentially descriptive of quality. 

On appeal. 

TRADS-M.IBS FOR WAGONS. 

AppUeation filed July 31, 1903, No. 66,313. 

Mr. D. P. Wolhaupter for the applicant. 
Allen, Commissioner: 

This is an appeal from a decision of the Exam- 
iner of Trade-Marks refusing to register the word 
'' Sterling " as a trade-mark for wagons. 

Tlie decision of the Examiner is based on the 
ground that the word " Sterling" is not arbitrary . 
in character, but is essentially descriptive of qual- 
ity. He says: 

Registration has been refused for the reason that the word 
claimed is indicative of a quality of the goods to which it is ap- 
plied. 

In the Century Dtctionart/, fhe word "Sterling," as a noun, is 
defined as a coin; as an adjective, it is defined as: 

1. "Of fixed or standard national value; conforming to the na- 
tional standard of value; said of English money, and. by exten- 
sion, (if the precious metals." 

'Z. "Of auUnowledged worth or influence: authoritative." 

3. "Genuine: true; pure; hence, of great value or excellence.'' 

It is raanife-jt, from the delinition last above given, that the 
word is indicative of quality ao applied to merchandise, mean- 
ing, in this case, that the wagons arc of great value or excellence, 
and tlierefore it is not an arbitral y mark indicative of origin and 
Oivnership. 

The mark claimed, in its deser"_.,tive sense, is similar to the 
word "Perfection," wliich in e:c J3p,rte St. Louis Candy Co. (101 
O. G.. 220) was refused registration tor the reason that it de- 
scribed the style, grade, or quality of the candy. 

I agree with tha foregoing conclusions of the Ex- 
aminer, and his decision is affirmed; 




/^x:oTf ^(= 



Ex PARTE Gbocees Specialti Mfg. Co., 

LlJnTED. 
Decided December IS, 19o:. 
1. Trade - Mark— Words in Foreign Language Not Necessa- 
rily Arbitrary. ' . » 
The mere fact that tha words usefl as a trade-mark are in a 
foreign language does not of itself make tliem arbitrary in 
character. 
3. Same— "Le Bon "—Meaning of the Mark Considered. 
The words "The Gfood" cannot be properly registered as a 
trade-mark, because they are descriptive of quality of the ar- 
i tji>i» to which they are applied, and- it foUo^"^ that the words 
j " Jje -Jon " are not registrable. 
3. Siais— The Words " The Good " Not Areitraey— Tee Words 
" Le Bon " Not Registrable. 
Held ti.at as the words " The Good " may be adopted in gen- 
eral by allt - -oc 3 and cannot-become the exclusive property 
of any one person, as these words necessarily mean that the 
merchandise has a certain quaUty or characteristic, it follows 
that the words " Le Bon " are not registrable as a trade-mark - 
for baking-powder. 

On appeal. 

srade-mark foe baking-powder. 
AppHcation filed April 21, 1903, No. 65,614^ 
Ifr. L. Y. MoiiUo7i for the appellant, 

Allen, Commissioner: 

This is an appeal from a decision of tlie Examiner 
of Trade-Marks refusing to register the words " Le 
Bon " as a trade-mark for baking-powder. 

Registration was refused;,becaiise in the opinion- 
of the Examiner the — 

words claimed as a trade-mark are descriptive of a quality of 
the goods and are not arbitrary and fanciful in character, in- 
dicative of origin and ownership. 

The French words "lebon" mean "the good." 
The m.ere fact that the words used by the appel- 
lant are in a foreign language does not of itself 
[ make them arbitrary in character. To this effect 
is the decision of the circuit court of appeals in 
Dadirrian v. TacuMan et al, (98 Fed. Rep., 872.) 
In this case the court held that the word " Mat- 
zoon," which was the foreign name of the article 
to which it was applied, was not an arbitrary word 
t^Sen used in this country. 

If the words "The Good" cannot be properly 
registered as a trade-mark beeaiise they are de- 
scriptive of quality of the article to which they are 
applied it follows that the words "Le Bon." are 
" not registrable. 

The appellant stated in an argument filed dur- 
ing the prosecution of .tiiia ease before the Exam* 
iuer.that — 

it is quite evident that the purchasing public would never for', 
a moment imagine that ''Le Bon" found on a package of bak- . 
ing-powder was intended to describe in anyway the contents of 
the package; for the very manifest reason tliafc all manufac- 
tnrers would of course call theii' product "good" or "the- 
good." 

And, again, it is stated that the words do "not 
distinguish the quality of these goods from any 
other goods; as all goods are presumably. .called 
'good.'" 

It is -apparent from the argument that the ap- 
pellant is of the opinion that the words "The 
Good " may v/ith equal propriety be used by all 
persons to designate their merchandise, provided 
they are of the opinion that such merchandise is 
of good quality. 

The appellant is clearly right in this opinion, and 
it follows that the words "The Good" may be 
adoj^ted in general by ail persons and cannot be- 
come the exclusive property of any one person, as 
these words necessarily mean that the merchandise 
has a certain quality or oharacteii.stic. 

It follows, therefore, that the Examiner was right 
in refusing to register the French words ' ' Le Bon " 
as a trade-mark for baking-powder, and his deci- 
sion is aflarmed. 






Ex PARTE Mark Cross Co. 

Decided January S, 1903. 
1. Trade-Mark— " Cross "—ScRNAME Not Registrable. 

The word "Cross" printed in letters of different size so that 
outline shall have the shape of an ellipse refused registration 
as a trade-mark because the word is a common surname. 

Same— AnTOGnAPH;-SiGNATUREs— Pecttliarities in Setting 
Forts Name. 
Autograph -sigStures are registrable as trade-marks be" 
cause the special characteristics of the name as set forth so 
far outweigh the mere name upon which it is founded that 
the name thus expressed or modified amounts to an arbitrqix 
mark, and this principle applies to other modes of setting 
{forth names. 
3, Same— Nam^s— Peoui/Iarity- op Expression— Identity De- 

§TR0Y£I1. . 1. ,„ . 

For a name to be registrable as a trade-mark the peeuliari- 
ties of the expression of the name must so far transcend the 
mere name that the peculiarities and not the name become 
the significant and striking elements which affect the mind 
■when the work is considered, 

On appeal. 

THADE-MARK FOR HARNESS, ETC. 

Application filed January 21, 1903, No. 64,900. 

Mr. Walter F. Wood and Messrs. Murtevant & 
Greeley for the applicant. 
Allen, Commissioner: ; 

This is an appeal from a decision of the Exam- 
iner of Trade-Marks refusing to register a trade- 
mark which is described as follows: 

The trade-mark of said company consists of a particular and 
distinctive arrangement of the word " Cross," to wit: the first 
and last letters of said word being of substantially equal height 
and the middle letter of the maximum height and projecting 
an equal distance above and below the respective tops and bot- 
toms of tile end and intermediate letters so that the outline of 
the whole forms an ellipse; the essential feature is the partiou^ 
lar and distinctive arrangement of the word " Cross "forttied 
with letters of the character, shape and arrangement above de- 
scribed and shown in the drawing. 

The word " Cross " is a common surname and is 
alsdiihe-surname of the original owner of the busi- 
ness now carried on by the ajypeUftut/ There is, of 
course, no contention in behalf of the appellanc 
that the surname as such is registrable as a trade- 
I mark. The only question for decision, therefore, 
1 is whether the particular mode in which the word 
"Cross" is printed presents such an exclusive and 
j singular formation that its peculiarities are some- 
thing beyond the printing of the name in a more 
I or less common style of type. 

The controlling principle in eases of this sort is 
the principle arising in cases of autograph-signa- 
tures. These are considered as registrable, al- 
'I though the mere names would not be registrable, 
I because the special characteristics of the name as 
set fc*th so far outweigh the mere name upon which 
it is founded that the naWethus expressed or modi- 
fled amounts to an arbitrci-y mark. 
j It seems clear that in addition to autograph-sig- 
I natures there may be other modes of setting forth 
I names by which such peculiarity is added to the 
mere name as to bring the name thus expressed or 
modified within the principles which render auto- 
graph signatures capable of exclusive appropria- 
tion to an individual. In any such ease, however, 
the peculiarities of the expression of the name must 
so|ar transcend the mere name chosen that these 
peculiarities, and not the name, become the sig- 
nificant and striking elements which affect the 
mind when the^mark is considered. 

The peculiarities must dominate the mere name 
and reduce it to a position of relative obscurity. 
This result has not been accomplished in the case 
under consideration. In this case only a slight pe- 
culiarity of form of expression of the mere name 
has been obtained by the use of a common expe- 
dient of the type-setter, and it must be held that 
for determination of the identity of this mark it 
repiains practically the mere name "Cross." 

It foUov>-s from this eoi elusion that the mark 
must be ooKsidei-cd unregistrable, and the decision 
of the Examiner of Trade-Marks refusing registra- 
tion is accordingly affirmed. 



295 

6zi 




Supreme Court of the United States. 

Clinton K. Woiidbn & Company «. The Cali 

FOHNiA Fig Syrip Company. 

Decided January .^ 1003. 
1. Trade-Mark— " SyRL'p ok Figs "—Deceptive. 

"Syrup of Figs" as a trade-mark or trade-name tor a medi- 
cal preparation containing no appreciable amount of the syrup 
of tigs Held to be deceptive and not entitled to protection as ;i 
property right. ■ 

a. Same— Same— Trade-Name — False Suggestion. 

The contention that "Syrup of Figs" although not a tech- 
nical trade-mark may be protected as a trade-name describing 
the article overruled because it contains a false suggestion. 

8. Same— Same — Description or Deception. 

Even if the juice of flgs was at first so largely used in the 
compound called " Syrup of Figs" as to make that term de- 
scriptive, Held that there was no justification for continuing 
the use of that term after the manufacturers and venders of 
the medicine ceased to use fig-juice as a material ingredient. 

4. Same— Same— Deception SHo-mi by Popular Belief. 

The pubhcation by the complainant of articles stating that 
the medical properties of its compound " Syrup of Figs " were 
derived from senna and not the juice of figs Held insufficient 
to avoid the charge of deception, since the popularity of the 
medicine was due to the popular belief that its essential ingre- 
dient was the juice of flgs. 

5. Same — False Assertion — Property Right Cannot be Main- 

tained. 

Where any symbol or label claimed as a trade-mark is so 
constructed or worded as to make or contain a distinct asser- 
tion which is false, no property can be claimed in it. and the 
right to the exclusive use of it cannot be maintained. 
0. Same— Fraudulent Representations by Complainant— In- 
junction Refused. 

Where the defendant sold a medical preparation named, 
marked, and packed in imitation of the complainant's medcine 
for the purpose and with the design and intent of deceiving 
purchasers and inducing them to buy defendant's preparation 
instead of the complainant's. Held that an injunction would 
issue if it were not for the fact that the complainant has so 
fraudulently represented to the public the nature of its medi- 
cal preparation that it is not entitled to equitable relief. 
7. Same— Quack Medicines — Right of Property Therein. 

In the absence of legislation limiting and controlling traffic 
in so-called "quack " medicines prepared by others than reg- 
istered physicians Held that the courts cannot declare deal- 
ing in such preparations to be illegal nor the articles them- 
selves to be not entitled as property to the protection of the 
law. 

On writ of certiorari to the United States Circuit 
Court of Appeals for the Ninth Circuit. 

STATEMENT OF THE CASE. 

On June 1, 1897, the California Fig Syrup Com- 
pany, created under the laws of the State of Ne- 
vada, and having its principal place of business in 
San Francisco, California, filed a bill in equity in 
the Circuit Court of the United States for the North- 
ern District of California, against Clinton E. Wor- 
den & Company, a corporation of the State of Cali- 
fornia, and against J. A. Bright, T. F. Bacon, C. .J. 
Schmelz, and Lucius Little, citizens of the State of 
California. 

The bill alleged that, in the year 1879, one Rich- 
ard E. Queen invented "a certain medical prepa- 
ration or remedy for constipation and to act upon 
the kidneys, liver, stomach and bowels, which med- 
ical compound is a combination in solution of plants 
known to be beneficial to the human sy.stem, form- 
ing an agreeable and effective laxative to cure ha- 
bitual constipation and many ills, depending upon 
a weak and inactive conditionof the liver, kidneys, 
stomach and bowels;" that shortly after the said in- 
vention the said Queen sold and transferred all his 
right, title and interest in and to said medical com- 
pound, and in and to the trade-name, trade-marks 
and good-will of said company to the complainant 
company, which has ever since been engaged in the 
manufacture and sale of said medical preparation 
or remedy; that said medical preparation has al- 
ways been marked, named and called by the com- 
plainant "Syrup of Figs," that name being printed 
or otherwise marked upon every bottle, and also 
printed upon the boxes, packages or wrappers in 
which the bottles of the preparation were packed 
for shipment and sale; that the complainant and 
its saiil IT ■''■■•■''•ssor 111 iiitcivtt ..re,.,, ti... i;,.if to pad 




and dress or mark a liquid laxative preparation in 
the manner illustrateil by Exhibits "'A"' and "B ' 
attached to the bill — that is to say, in an oblong, 
rectangular box or carton, with statements of the 
virtues of the preparation printed in different lan- 
guages upon the back and sides of the carton, and 
on the border within which, at the top, is a repre- 
sentation of a branch of a fig-tree bearing fruit and 
leaves, surrounded by the words "Fig Syrup Com- 
pany, '" or " California Fig Syrup Compaiij', " and be- 
lowwhich appear, in large letters, the words "Syr- 
up of Figs," and below these last-named words ap- 
pears a brief statement of the virtues of th is prepara- 
tion, together with the words "Manufactured only 
by the California Fig Syrup Company;" that the 
complainant has spent more than one million dollars 
in advertising said preparation, always under the 
name of " Syrup of Figs,"or "Fig Syrup,"through- 
out the United States and other countries, and that 
millions of bottles of said preparation have been 
sold; that, by virtue of the premises, the complain- 
ant has acquired the exclusive right to the name, 
"vSyrup of Figs," or "Fig Syrup," as it is indiffer- 
ently called by the public, or any colorable imita- 
tion of the same, as applied to a liquid laxative 
medical preparation irrespective of the form of 
bottle or package in which it may be sold to the 
public; that, by virtue of the premises, the com- 
plainant has actiuired the exclusive right to the 
manner and form of packing the same for sale, in 
connection with the words "Syrup of Figs "or "Fig 
Syrup," or any colorable imitation of the same, as 
a part of the business-name of a concern making a 
liquid laxative medical compound. 

The bill charges that the defendant, wishing to 
trade to its own profit and advantage upon the 
reputation of the complainant's preparation, and 
desiring to impose a worthless production upon the 
public, has caused to be made, put up and sold, 
and offered for sale, a liquid laxative medical com- 
pound, resembling complainant's preparation, un- 
der the name " Syrup of Figs" and "Fig Syrup," 
and marking the boxes and packages containing 
the same with the name "Fig Syrup" or "Syrup 
of Figs," and has put the prejiaration, under said 
name, in bottles and packages or cartons, so closely 
in imitation of the complainant's bottles and pack- 
ages, as to be likely to deceive purchasers, and so 
as to enable unscrupulous retail dealers to palm 
off defendant's preparation on the consumers as 
and for the complainant's preparation; and that 
purchasers frequently have been deceived and in- 
duced to buy the compound prepared by the de- 
fendant : that the complainant has been greatly in- 
jured in the business in the manufacture of its liq- 
uid laxative preparation "Syrup of Figs " or "Fig 
Syrup," and believes that it has suffered damage 
and injury by reason of defendant's acts to the ex- 
tent of at least ten thousand dollars; that this is a 
continuing wrong, and one which it is impossible 
to exactly calculate, and one which, if permitted to 
continue, will work irreparable injuryto the com- 
plainant. 

Wherefore the complainant prayed, in its said 
bill, for an injunction restraining the defendant 
and its agents, servants, etc., from manufacturing, 
selling or offering for sale, directly or indirectly, 
any liquid la.vative medical preparation, marked 
with the words "Syrup of Figs" or "Fig Syrup," 
or marked with any words which may be a color- 
able imitation of the name of "Syrup of Figs" or 
"Fig Syruii," and from putting up, selling or deal 
ing in any liquid laxative medical preparation 
which shall have a tendency to deceive the public 
and induce liuyers to purchase defendant's prepa- 
ration, lielievingthesameto be complainant's prep- 
aration, aiid that defendant be perpetually enjoined 
from usin^ (lie words "Fig Syrup Company" as a 
business naiiir, or from using'the words " Fig Syr- 
>r" f^}' I'll) 1 of Figs " as part of its i.)usiness-naine. 



■: V 




297 



in ponnection with the manufacture and sale^of a 
ciu°d?axativepreparation Thecompla nantalso 
prayed for an account for damages to eomplamant 
' and for gains and profits derived by the defendant 
company and for such other and further rehet as 
m'ydkreeable to equity and gool conscience 

The defendant company and the oti^e^f ^^ «f ^^^nts 
filed a ioint and several answer, admitting many 
o the aUegations of the bill, but denying and put- 
ting the complainant on proof of those which al- 
leged any intentional or actual appropriation by 
,thl defendant company of Proprietory or biisiness 
rights of the complainant. The answer proceeded 
to make the following allegations: 

Anrf fnr « qeoarate and fui-ther defense, these defendants 

issssisssissll 

gfsl:£r^^fuyntrd1^|itious^|^^^^^ 



a court of equity. ci j 

The canse was put at issue by a replication filed 
by the complainant company. Pending the trial 
an apphcation for a prelimmary injunction was 
madl^ which was allowed upon the ground that 
ae complainant had made such a showing by the 
pleadings and affidavits that i* ;^.as entitled to an 
injunction against the sales of Fig Syrup by the 
flpfpndant (86 Fed. Rep., 313.) 

A farle amount of evidence was taken, and on 
Ji^e7 1899, a decree was entered by the circuit 
court perpetually enjoining the defendant com- 
nanv and the otlier defendants from making, sell- 
Fng or offering to sell any hquid axative medicme 
or preparation under the name of Syrup of Figs 
or "'Fig Syrup," or under any name m colorable 
^tatifn df the name " Syi'up of Figs," and rom 
makmg, seUing or offering to sell .^^7 ^edical hq^ 
uid laxative preparation, put up in bottles boxes 
or packages similar in form or arrangement to the 
bottles or packages used by the complamant in 
the manufacture and sale of its^ said iquid a^^ 
tive preparation, or so closely resembling the same 
as to be calculated to deceive the publ c. and fiom 
using the name "Fig Syrup Company "a^dfipm 
using a name whereof the words Fig Syrup, oi 
" Sv?up of Figs Company," form a part as a busi- 
neslna^ne in lonnectfon with *« manufacture o 
a hquid laxative preparation. (95 Fed. Kep. , ld~^J 
There was an appeal to the Circuit Court of Ap- 
peals for the Ninth Circuit, where «^e decree f 
the circuit court was affirmed, Ross, O. J., aissent 

*"lhe^Staan'^4ght to thi. Co rt J, a 
writ of certiorari allowed on November 20, 1900. 

Mr John H. Miller for the appellant. 

Mr. Warren Olney and Mr. John G. Carlisle ioi 
the appellee. ^_ ^ . 



Mr. .Justice Shiras delivered the opinion of the 
Coui't. 

The courts below concluded, upon the evidence, 
that the defendants sold a medical preparation 
named, marked and packed, in imitation of the 
complainant's medicine, for the purpose and with 
the design and intent of deceiving purchasers and 
inducing them to buy defendant's preparation m- 
stead of the complainant's. We see no reason to 
dissent from that conclusion, and if there were no 
other questions in the case, we should be ready to 
affirm the decree, awarding a perpetual injunction 
and an account of the profits and gains derived 
from such unfair and dishonest practices. 

Another ground, however, is urged against the 
complamant's right to invoke the aid of a court of 
equity in that the CaUf ornia Fig Syrup Company, 
the complainant, has so fraudulently represented 
to the public the nature of its medical preparation 
that it is not entitled to equitable relief. 

Some courts have gone so far as to hold that 
courts of equity will not interfere by injunction m 
controversies between rival manufacturers and 
dealers in so-called quack medicines. {Fowle y. 
Spear Circuit Court of the United States for the 
Eastern District of Pennsylvania, Peimsylvama 

Law Journal, Vol. 7, p. 176; ^^<^^\^ -J^Z^^^^lI^ 
Wall Jr , 141; Fetridge v. Wells, 4 Abb. Pr., 144.) 
It may be said, in support of such a view, that 
most if not all, the States of this Union have en- 
actments forbidding and making penal the prac- 
tice of medicine by persons who have not gone 
through a course of appropriate study, and ob- 
tained a license from a board of examiners; and 
there is similar legislation in respect to pharma- 
cists And it would seem to be inconsistent, and 
to tend to defeat such salutary laws, if medical 
preparations, often and usually containing power- 
ful and poisonous drugs, are permitted to be 
widely advertised and sold to all who are wilhng 
to purchase. Laws might properly be passed hm- 
itino- and controlhng such traffic by restraining re- 
tail dealers from sellmg such medical preparations, 
except when prescribed by regular medical practi- 
tioners. „ , , • 

But we think that, in the absence of such legis- 
lation, courts cannot declare dealing in such prep- 
arations to be iUegal, nor the articles themselves 
to be not entitled, as property, to the protection 

of the law. . 

We find, however, more solidity in the conten- 
tion on behalf of the appellants, that when the 
owner of a trade-mark applies for an injunction to 
restrain the defendant from injuring his property 
by making false representations to the public it 
is essential that the plaintiff should not in his 
trade-mark, or in his advertisements and business, 
be himself guilty of any false or misleading repre- 
sentation; that if the plaintiff makes any material 
false statement in connection with the property, 
whfch heTeeks to protect, he loses his right to 
daimthe assistance of a court of equity; that where 
anv symbol or label claimed as a trade-mark is so 
PonsSted or worded as to make or contain a 
totinct assertion which is false, no property can 








m. 



be claimed on it, or, in other words, the right to 
the exclusive use of it cannot be maintained. 

Among the cases cited to sustain this contention 
are the following: 

In Cornell v. Reed, (128 Mass., 477,) the plaintiff 
sought to establish the exclusive right to the words 
"lEast Indian." as ai^plied to his remedy, and the 
court, through Gray, C. J., said: 

Tilt* coiiL-lusivf* answer to this suit is, that the plaintiff has 
adopted and used these words to denote, and to inaicnte to the 
l>nb!ic,tlmt the medicines were used in the East Indies, and that 
tlie formula foi* them was obtained (here, neither of which is 
Ihe fact. Under these circumstimces, to maintain this bill 
would be to lend the aid of the court to a scheme to defraud the 
public. 

In Siegert v. Abbott, (61 Md., 370,) where the sub- 
ject-matter of the trade-mark was "Angostura Bit- 
ters,'' which ijurported to have been prepared by 
Doctor Siegert, at Angostura, Trinidad, and where 
it appeared that Doctor Siegert was dead, and had 
never lived at Angostura, the bill was dismissed, 
the court saying: 

It is a genera! rule of law, in cases of this kind, that courts 
of equity will not interfere by injunction where there is any 
lack of truth in the plaintiffs case; that is, w-here there is any 
misrepresentation in his trade-mark or labels. 

In Alden v. Gross, (25 Mo. App., 133,) a trade- 
mark was claimed in the words "Fruit Vinegar," 
and the court said: 

The vinegar was not manufactured out of fruit, in the plain, 
ordinary, usual sense of that term, but out of low wines dis- 
tilled from cereals, and fruit enters into its composition only to 
a very insignificant extent. * * * It would be a novel ap- 
plication of the rule govei'uing the subject of trade-marks if 
one who manufactures vinegar out of cereals could appropriate 
for the article thus manufactured the word " Fruit,'' and there- 
by exclude another from using the word as descriptive of an 
article which is, in point of fact, manufactured out of fruit. 
* * * But whether the word "Fruit" in this counection is 
purely iudicative of the character or quality of the article or 
not, the plaiiitiif's exclusive claim to it must "fail on the further 
ground that the use of the word, in that connection, is alone de- 
ceptive. 

In Prince 3Ianufaoturing Company v. Prince's 
Metallic Paint, (130 N. Y., 34,) an injunction to pro- 
tect a trade-mark was refused, by reason of a false 
representation as to the place from which the ore 
was obtained, and the court of appeals used the 
following language: 

Any material misrepresentation in a label or trade-mark as to 
the person by whom the article is manufactured, or as to the 
place where manufactured, or as to the materials composing it, 
or any other material false representation, deprives a party of 
the right to relief in equity. The courts do not, in such cases, 
take into consideration the attitude of the defendant. * * * 
And. although the false article is as good as the true one, "the 
privilege of deceiving the pubhc, even for thei]' own benefit, is 
not a legitimate subject of commerce." 

English cases are to the same effect. Thus in 
Pidding v. How, (8 Simons, 477,) where it appeared 
that the plamtiff had made a new sort of mixed 
tea, and sold it under the name of " Ilowqua's Mix- 
ture, " but, as he had made false statements to the 
public, as to the teas, of which his mixture was 
composed, and as to the mode in which they were 
procured, the court refused to restrain the defend- 
ant from selling tea under the same name, and said: 

As between the plaintiff and the defendant, tie course pur- 
sued by the defendant has not been a proper one; but it is a 
clear rule, laid down by courts of equity, not to extend their 
protection to persons whose case is not founded in truth. And. 
as the plaiiitilT, intliis tyise, has thought fit to mix ur) that wliich 
may be true with that which is false, in ititroducing his tea to 
the piiWic, my opinion is, that, unless he establish his title at 
law, the court cann<it interfere on his behalf. 

The English ease of Leather Cloth Co. v. Ameri- 
can Leather Cloth Co. is a leading one on this sub- 
ject and in which the nature of false representa- 
tions that will defeat the right of the owner of a 






trade-mark to protection in equity was much con- 
sidered. 

A bill, asking foi- an injunction against defend- 
ants who were charged with using stamps and 
trademarks, so similar to those of the complainant 
as to deceive purchasers, was sustained by Vice 
Chancellor Wood, who granted the injunction 
prayed for. (1 Hem. & Miller's Reports, 371.) On 
appeal the decree of the Woe Chancellor was re 
versed by the Lord Chancellor, and the complain- 
ant's Ijill was dismissed. (4 De Gex, J. & 8., 136.) 

The conclusions reached by Lord Chancellor 
Westbury were that there is a right of property in 
a trade-mark, name or symbol in connection with 
a particular manufacture or vendible commodity, 
but that where the owner of such a trade-mark ap- 
plies for an injunction to restrain the defendant 
from injuring his property by making false repre- 
sentations to the public, it is essential that the 
plaintiff should not in his trade-mark or in the 
business connected with it be himself guilty of any 
false or misleading representation. In considering 
what constitutes a material false representation, 
the Chancellor observed that he could not receive 
it as a rule, either of morality or equity, that a 
plaintiff is not answerable for a falsehood, because 
it may be so gross and palpable as that no one is 
likely to be deceived by it ; that it there be a wil- 
ful false statement, he would not stop to inquire 
whether it be too gross to mislead. 

This decision was affirmed by the House of Lords. 
(11 H. L. Cas. , 533. ) In that tribunal, in the several 
opinions of the lav/ lords, the views of the Lord 
Chancellor as to the effect of false representations 
were approved, but it was thought that, independ- 
ently of that question, the plaintiff was not en- 
titled to an injunction, because the rival or antago- 
nistic trade-mark of the defendants did not suffi- 
ciently resemble that of the plaintiff's as to be cal- 
culated to deceive the public. 

In Fetridge v. Wells, (13 How. Pr., 385,) the plain- 
tiff sold a soap under the name of " Balm of a Thou- 
sand Flowers,"' and in denying the plaintiff's right 
to the exclusive use of these words as a trade-mark. 
Judge Duer said: 

I am fully convinced that the name "Balm of a Thousand 
Flowers" was invented, and is now used, to convey to the 
minds of purchasers the assurance that the highly-scented liq- 
uid to which the name is given is, in truth, an extract or distil- 
lation from flowers, and therefore not merely an innocent, but 
a pleasant and salutary preparation. Not only is this the mean 
ing that the woi'ds used naturally suggest, but in my opinion it 
is that which they actually and plamly express and were de- 
signed to convey. -■' * * Let it not be said that it is of little 
consequence whether this representation be true or false. No 
representation can be more material than that of the ingredi- 
ents of a compound which is recommended and sold as a medi 
cine. There is none that is so likely to induce confidence in the 
applicati(3n and use of the compound, and none that, when 
false, will more probably be attended ■with iujm-ious, and per- 
haps fatal, consequences. * * * Those who come into a court 
of equity, seeking equity, must come with pure hands and la 
pure conscience. If they claim relief against the frauds of oth- 
ers, they must: themselves be free from the imputation. If the 
sales made by the plaintiff and his firm are affected, or sought 
to be, by misrepresentation and falsehood, they cannot be lis- 
tened to when they complain that, by the fraudulent rivalry 
of others, their own fraudulent profits are diminished. An ex- 
clusive privilege for deceiving the public is assuredly not one 
that a court of equity can be required to aid or sanction. To 
do so would be to forfeit its name and character. 

In Manhattan Medicine Co. v. Wood, (108 U. S., 
218,) the ease of Fetridge v. Wells was cited with 
approval, and likewise the English oases of Pid- 








299 



dingY. How, (8 Simns., 477,; and The Leather Cloth 
Company v. The American Leather Company, (4 
De Gei, J. & S., 137.) In Manhattan Medicine Co. 
V. Wood, the complainant claimed to be the owner 
of a patent medicine and of a trade-mark to distin- 
guish it. The medicine was manufactured by the 
complainant in New York; the trade-mark de- 
clared that it was manufactured by another per- 
son in Massachusetts. The Circuit Court of the 
United States for the District of Main^ per Mr. 
Justice Clifford, held, that the complainant, owing 
to false statements in his trade-mark, was entitled 
to no relief against a person using the same trade- 
mark in Maine, and dismissed the bill. On appeal 
this decree was afiBrmed, this Court saying: 

A court of equity will extend no aid to sustain a claim to a 
trade-mark nf an article which is put forth with a misrepresen- 
tation to the public as to the manufacturer of the article, and 
as to the place where it is manufactured, both of which particu- 
lars were originally circumstances to guide the purchaser of the 
medicine. 

In Clotworthy v. Schi^pp, (43 Fed. Rep., 62,) the 

right to a trade-mark was claimed in the word 

"Puddine," in connection with the words "Rose'' 

and "Vanilla," but Circuit Judge Lacombe refused 

an injunction, and in his opinion said: 

The complainant himself is engaged in deceiving the very 
pubUc which he claims to protect from the deception of others. 
He calls his preparation "fruit" puddine. In nine di£Eei-ent 
places on his package this word "fruit" is repeated as descrip- 
tive of the article, and a dish of fruit (pears,grapes, etc.)ismost 
prominently depicted on one face of each paclcet. His packages 
plainly suggest that fruit of some kind enters in some shape in 
his compound. A chemical analysis produced by the defend- 
ant, the substantial accuracy of which is not disputed, discloses 
the fact that his " Puddine " is composed exclusively of corn- 
starch, a small amount of saccharine matter, and a flavoring 
extract, with a little carmine added to give it color. It contains 
no fruit in any form. 

Krauss v. Peebles' Sons Co., (58 Fed. Rep., 585,) 
was a case in which it was shown that the liquor 
sold as "Pepper Whisky" was in fact a mixture of 
Pepper whisky and other whiskies, and an injunc- 
tion to prevent infringement was refused by Cir- 
cuit Judge Taft, who, in his opinion, said: 

To bottle such a mixture, and sell it, under the trade-label and 
caution above referred to, is a false representation, and a fraud 
upon the purchasing public. A court of equity cannot protect 
property in a trade-mark thus fraudulently used. 

And this doctrine of the English and American 
eases above referred to has been applied in the Fed- 
eral eii'cuit courts and circuit courts of appeals in 
cases in which the California Syrup Company, the 
complainant in the present ease, 'was a party. 

In the Circuit Court of the United States for the 
District of Massachusetts, March 6, 1895, the Cali- 
fornia Fig Syrup Company, the complainant in 
the present case, filed a bill against Kate Gardiner 
Putnam and others to restrain the infringement of 
the plaintiff's trade-mark. The facts of the case 
were thus stated by Circuit Judge Colt in his opin- 
ion, reported in 66 Fed. Rep., 750: 

The plaintiff is the proprietor and manufacturer of a liquid 
'laxative compound called "Syrup of Figs." The defendants 
manufacture and sell a laxative medicine wluch they term " Fig 
Syrup." There is no evidence that the defendants have imitated 
the plaintiff's labels or packages except in this particular. If 
this preparation is in fact a syrup of figs, the words are clearly 
descriptive, and not the proper subject of a trade-mark. Upon 
this point the contention of the plaintift' is that its preparation 
is not a syrup of figs, since it contains only a very small percent- 
age of the juice of the fig; that the laxative ingredient in it is 
senna; that while the iig in the form of fruit may have laxative 
properties arising from the seeds and skin, the fig in the form 
of syrup is no more laxative than any other fruit-syrup; tliat 
it follows from these facts tliat these words, as applied to this 
compound, are not descriptive, but purely fanciful, and there- 
fore constitute a valid traile-marlc. The evidence shows that 
the compound is not a svrun ol" figs. It might more properly 



be termed a "Syrup of Senna." if the words were intruded to 
be descriptive of the article. But. assuming this is not a 
syrup of figs, we are met with the inquiry" whether these 
words, as applied to this preparation, are not deceptive. The 
label on every bottle reads as follows: "Syrup of Figs, the Cali- 
fornia Liquid Fruit Remedy. Gentle and Effective." On the 
sides of each bottle are blown the words "Syrup of Figs," and 
on the back the words " Calif oi-nia Fig Syrup Company, San 
Francisco, Cal." On the face of every package is a picture of a 
branch of a fig-tree with the hanging fruit, surrounded with the 
words " Calif ornia Fig Syrup. San Francisco, Cal.:" and beneath 
this tlie words "Syrup of Figs presents in the most elegant 
form the laxative and nutritious juice of the figs of California." 
H: * * Thus we see that the leading representation on the 
labels, packages and in the advertisements of this preparation 
is that it is a laxative fruit-syrup made from the juice of the 
California fig. * * * The popularity of this medicine arises 
from the belief in the mind of the ordinary purchaser that he is 
buying a laxative compound, the essential ingredient of which 
is the California fig, whereas, in fact, he is biiying a medicine 
the active property of which is se;nna. The ethical principle on 
which the law of trade-marks is based will not permit of such 
deception. It may be true, as a scientific fact known to physi- 
cians and pharmacists, that the syrup of figs has little or no 
laxative property; but this is not the belief of the general pub- 
lic. They purchase this preparation on the faith that it is a 
laxative compound made from the fruit of tlie fig, which is false. 
This is not an immaterial representation the elfect of which is 
harmless, btit it is a representation which goes to the very es- 
sence of the plaintiff's right to a trade-mark in these words. 
The cases are numerous where the courts have refused to grant 
relief under these circtimstances. 

Accordingly, the circuit court dismissed the bill 
with costs. On appeal to the Circuit Court of Ap- 
peals for the First Circuit the decree of the circuit 
court was affirmed. 

In the Circuit Court of the United States for the 
Eastern District of Michigan, April 1, 1S95, the 
California Fig Syrup Company filed a bill, seeking 
to restrain Frederick Stearns & Company from in- 
fringing complainant's trademark. The court de- 
clined to grant an injunction and dismissed the 
bill with costs, holding that the words "Syrup of 
Figs" or "Fig S5TUP," if descriptive of a syrup, 
one of the characteristic ingredients of which is 
the juice of the fig, cannot be sustained as a valid 
trade -mark or trade -name, and that, under the 
facts of the ease, the use of the name "Syrup of 
Figs, in connection with a description of the prepa- 
ration as a fruit remedy, nature's pleasant laxa- 
tive," applied to a compound, whose active ingre- 
dient is senna, and containing but a small propor- 
tion of fig-juice, which has no considerable laxative 
properties, is deceptive and deprives one so using 
it of any claim to equitable relief. 

On appeal to the Circuit Court of Appeals of the 
Sixth Circuit the decree of the circuit court was 
affirmed. (73 Fed. Rep., 812.) In his opinion Cir- 
cuit Judge Taft, after stating that the term ' ' Syrup 
of Figs," if intended to describe the character of 
the article concerted, could not be used as a trade- 
mark, proceeded to say: 

But the second ground presented, and that upon which the 
court below restecl its decision, prevents the com])laiiiant from 
having any relief at all. That ground is that tlie '■omplainanl 
has built up its business and made it valuable by an intentiona ! 
deceit of the public. It has intended the public to understand 
that the preparation which it sells has, as an important medici- 
nal agent in its composition, the juice of California figs. This 
has undoulitedly led the public into the purchase of the prepa- 
ration. The statement is wholly untrue. .Just a suspicion of 
fig-juice has been put into the preparation, not for the purpose 
of changing its medicinal character, or even its flavor, but 
merely to give a weak support to the statement that the article 
sold is syrup of figs. This is a fraud upon the pubhc. It is true 
that it may be a harmless humbug to palm ott upon the public 
as syrup of figs what is syrup of senna, but it is nevertheless of 
such a character that a courtrof equity will not encourage it by 
extending any relief to the person who seeiss to protect a busi- 
ness which has grown out ot and is dependent upon such deceit. 

It is well settled that if a jierson wishes his trade-mark prop- 
erty to be protected by a court of equity, he must come into 
court with clean hands, and if it appears that the trade-mark 
for which he seeks protection is itself a misrepresentation to the 
public, and has acquired a value with the public by fraudulent 
misrepresentations in advertisements all relief will be denied to 





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liim. This is ilie dui-trine of the highest foiirt <'f England, and 
110 court has laid it down witli any greater strintrency than the 
Supreme Court of the Uuitetl States. iMedtcnti- Co. v, li'itofl^ 
lOS U. S..21S: Lt'dthcr Cloth Co. v. American Leather Cloth Co.. 
IDeGex. J. &S., 13T.) 

The arfrument ff>r eoniplainant is, that because fi^ iuic-e or 
synip has no laxative property evei-ybndy o\i;j:ht to nndei-stand 
tiiat « hen the tei-ni is used to desif^'nate a laxative medicine it 
must liave only a fanciful meaning. But the fact is admitted 
that t!ie pithlic believe that fig juice or syrup hns laxative nie- 
dii-iiial pi<'i"'rties. It is to them that the complainant seelvs to 
sell its pieparation, and it is with respect to their knowledge 
and impressions that the character, whether descriptive or fan- 
ciful, of the term used, is to be detennineil. 

The counsel of the api^ellee in the present ease 
do not contend that the courts of the second and 
sixth circuits were wrong in denyhig the com- 
plainant any rehef upon the eases as i>resented in 
those courts. Thej' do contend that those cases 
were ai'gued upon a wrong theory by the counsel 
of the coiui)lainant. The language of the brief in 
this regard is as follows: 

Here was wliere complainant made a mistake. Acting- un- 
der advice of able counsel, it claimed the name "Syrup Figs" 
to be a technical trade-mark, when all that was necessary to 
claim was that it constituted a trade-name. 'Able counsel in 
the second and sixth circuits pressed injunction suits against 
infringers on the theory that complainant had a trade-mark in 
the name, and that the statement on the cartons and bottles 
was immaterial. He did not address himself to showing that 
the name "Syrup of Figs" came to be honestly and properly 
applied to the product as largely descriptive of the ingrecfients 
Lif the medicine. He was so afraid of ruining his case as a case 
of trade-marks, by showing that it was descriptive, that he did 
not prove what was proven in the case now at bar, viz. , that figs 
were at the time the name was given an important part of the 
composition. 

We are not much impressed with the force of 
this attempted distinction. Even if it were true 
that, at the time the medicine in question was first 
made and put upon the market, the juice of tigs 
was so largely used as one of the ingredients, as to 
have wai'ranted the adoption of the name "Syrup 
of Figs" as descriptive of the nature of the medi- 
cine, that would be no justification for continuing 
the use of the term after the uianufacturers and 
vendors of the medicine ceased to use fig-juice as 
a material ingredient. Kven if the term was hon- 
estly applied in the first instance, as descriptive, it 
would none the less be deceptive and misleading 
when, as is shown in the present case, it ceased to 
be a truthful statement of the nature of the com- 
pound. iVor are we disposed to concede that, un- 
der the evidem^e in the present case, the term 
"Syrup of Figs" or "Fig Syrup" was pioperly 
used as descriptive of the nature of the medicine 
when it was first made. Then, as now, the oper- 
ative laxative element was senna, and the addition 
of fig-juice was, at the best, experimental, and ap- 
parently was intended to attract the patronage of 
the public l>y holding out the name of the medi- 
cine as "Syrup of Figs." 

However that may be, it is now admitted that 
the use of (igs was found to be deleterious, and 
tlieii- use, as a substantial or material ingretlient, 
was abandoned. The following extracts are taken 
from the testimony of the inventor of the medicine 
now made and sold l>y the California Fig Syrup 
Company: 

During the year 187H I made many experiments with the idea 
nf producing a pleasant, effective, liquid laxative, having ob- 
serve<i that many people dislike ti> take pills, oils and other dis- 
u^irceablp nipiiit.ities; and, after many expei'imentsand study of 
laxatives in general, came t*» the conclusion that senna was the 
hh'st general laxative known, but that the preparatiun^ then on 
the mai'kf'l wfre either weak in etlect "i- gri|iiiigiii theirnatnre. 
:uid 1 thungld that if I could niakea liquid prcimiation of seiuia 
which \\nnld he mally pleasant to tlic taste and free fi'oui grip- 
in l-^ ijnalificstliat it wuu Id answer thepur)iosc. And at that time 
1 a Isu th"u;,dit that certain < if her medicinal a;,^eTitsshoidd bei-om- 
biiu'd with the senna, and somci if those nicdiciTial agents were not 
very pleasant to ihe taste. Ami I thought of figs as a fruit that 
would nft'ord me a considerable (piantity of sugar and mucilagi- 
nous substance to counteract the unpleasant taste of the medic- 
inal agents. And 1 used figs freely in my cxi)eriments for that 
purpose. As 1 jimgressed with n^y experiments I found or de- 
termined as a result of my experiments and studies rhat a uni- 
formity and stability of product were of great importance, and 
that the hg substance was not conducive to thctse qualities, and 
that it had a strong tendency to f'-rmeut, and therefore it wouhl 



be better to use a smallquantfty. I also found tjiat those medic- 
inal agents which were unpleasant to the taste \vere better atlapt- 
ed to special cases than to general use, and concluded to omit 
them, and therefore did not need as large a quantity of fig sub- 
stance as formerly. As finally prepared I had a new and ongiual 
compound, of which the hg-syrup formed a very small but pleas- 
ant part, although not an essential part of the combination: that 
is, I might have used an equal <pmntity of honey, or some othei' 
substance, instead of the fig substance, without changing tbe 
character and effect of the combination. * * * I desired to 
give a name which would be new and original to distinguish my 
product from all the laxative, medicines, and which would be 
pleasantly suggestive, and, after thinking over a number of 
names, I decided to use the name "Syrup of Figs.'" 1 knew that 
I was not using the nanie generically, because figs did not give 
character and eti'ect to the combination. 

On cross-examination this witness further stated 
that — 

we still use figs when we might use some other pleasant sub- 
stance, because we first started to use figs; and the fig sub- 
stance, \\'bile it is used, is not an essential part of the compound 
or what 1 would call an essential part of the compoimd. That 
is, not a part of the compound which gives to it its distinctive 
aromatic and medicinal (jualities. 

That the complainant company, years after it 
had established apopular demand for its product, 
issued statements in medical journals and newspa- 
pers and circulars, that the medical properties of 
their compound were derived from senna, does not 
relieve it from the charge of deceit and misrepre- 
sentation to the public. Such publications went 
only to givinij; information to wholesale dealers. 
The company by the use of the terms of its so- 
called trade-mark on its bottles, wrappers and car- 
tons continued to appeal to the consumers, out of 
whose credulity came the profits of their business. 
And, indeetl, it was the imitation by the defend- 
ants of such false and misleading representations 
that led to the present suit. 

The bill in the preserrt case contains the follow- 
ing allegations: 

Yotu- orator further states that this laxative medical com- 
pound, or preparation, made and put up as aforesaid by your 
orator, has always been marked, named and called by your ora- 
tor "■ Syrup of Figs," being advertised by your orator under that 
name, the name ""Syrup of Fig:s" being printed or otherwise 
marked upon every bottle of this preparation made and sold by 
yoiir orator— this name being also printed upon the boxes, pack- 
ages or wrappers in which tiie bottles of this preparation are 
packed for shipment and sale; that it has been the practice of 
your orator to put the bottles containing this preparation in ob- 
long pasteboard boxes or cartons, so that they will reach the 
consumer in that form; that in all instances, not only the bot- 
tle which contains this preparation, but the btfx or carton which 
contain the bottles of this preparation, is marked vvit^i the words 
''Syrup of Figs" and also contains printed matter stating that 
this preparation is a niedical laxative preparation, and also giv- 
ing a general idea of its uses and purposes. * * * Your orator 
further states that it and its said predecessor in interest were the 
first to pack and dress or mark a liquid laxative preparation or 
medicine in the manner illusti-ated by Exhibits ''A" and " B"— 
that is to sa>-, in an oblong, rectangular box or carton, with state- 
ments of the virtues ot this preparation printed indifferent lan- 
guages upon the back and sides of the carton, and having on the 
front of the carton and on the border w itliin which, at the top, 
is a representation of a branch of a fig-tree, bearing fruit and 
leaves, surrounded by the words "Fig Syrup Company,''' <;ir 
"California Fig Syrup Company," and below which appear, in 
larger letters, the words " Syrup of Figs." 

["^pon such allegations and the admissions of the 
complainant's princii^ai witness, some of which are 
hereinbefore t|uoted,and upon the entire evidence 
in the case, and in the light of the authorities cited i 
by the counsel of the respective parties, our con- I 
elusions are that the name ''Syrup of Figs'' does 
not, in fact, properly designate or describe the 
preparation made and sold by the California Fig 
Syrup Company, scT^s to be susceptible of api^ro- i 
priation as a trade-mark, and that the marks and I 
names, used upon the bottles containing complain- j 
ant's preparation, and uijon the cartons and wrap- 
pers containing the bottles, are-so plainly decep- ' 
tive as to deprive the complainant company of a 
right to a remedy by way of an injunction by a 
court of equity. 

Accordingly, thedecreeof the circuit court of ap- 
peals is reversed; the decree of the circuit court is 
also reversed, and the cause is remanded to that 
court with directions to dismiss the bill of com- 
plaint. 

Mr. Justice McKenna dissented. 



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Ex- PARTE A. E. GreGOIRE and COJIPANl. 
Decided Jannary J, 1903. 
|1. TaADE-MAEK— Anticipatton— Maple-Leates. 

A trade-mark -wliicli consists of tlie representation oJ a cilus- 
ter of maple-leaves having their adjacent edges overlapping' 
the stems of the leaves being tied or retained together, is an' 
tioipatecl by a trade-mark consistmg of the -n-ords "Sap Maple 
Syi-up" arranged immediately above the representation of a 
single maple-leaf having placed thereon the words "Maple 
Leaf Brand," on the grounds tliat the brand of syrup to v.-hich 
each of the marks is applied would be known as the "maple- 
'leaf " brand of syrup and that the two marks resemble each 
other in appearance to such an extent as to cause confusion 
in the minds of the purchasing public. 
I. Same — Same — Identity of Two Tkade-Marics — Soukd of 
"Words as Well as Appearance to ee Considered. 
In considering the identity of two trade-marks the appear" 
&nce of the marks is as important as the sound of the words 
used therein when these words are spoken. Both senses are 
to be used in determining the question whether or not one 
mark so nearly resembles the other as to have the tendency to 
■ mislead and to cause confusion in the minds of the purchas- 
ing public. (Eximrte Vogel & Son, 99 O. G., 23:71. 1 
I 3. SA3IE— The Repkesestatio^t op a Haple-Leaf— Syrup— De- 
scriptive OE Deceptive. 
■ Where a can known to contain a syrup has thereon a repre" 
sentatibn of a maple-leaf, Held that the mark is either descrip- 
tive or deceptive and should be refused registration, as the or- 
dinary purchaser would naturally expect to find maple-syrup 
in the can, and if it was found to contain some other kind of 
syrup the purchaser would be deceived. 

Os appeal. ; 

THADE-MARK FOR SYRUP. 

Application filed August 38, 1903, No. 66,486. ■ ,-■ 

Messrs. Ehesa &. Bu Sois & Co. for the applicant, 
' Allen, Commissioner: 

This is an appeal from a decision of the Exam- 
iner of Trade-Marks refusing to register as a trade-, 
mark for syrups a certain illustration' of a cluster' 
of maple-leaves. 

The mark is described by the appellant as fol- 
lows: 

As shown in the accompanying facsimile, our trade-mark con- 
sists of the representation of a cluster consisting of several ma- 
ple-leaves having their adjacent edges overlapnin j, the stems of 
the leaves being tied or retained together. 

The ground taken by the Examiner is that the 
mark "Which the appellant desires to register so 
closely resembles the registered mark, No. 16,345, to 
G-. D. Powell for maple-syrup as to cause confusion 
between the two marks in the minds of the purr 
chasing public. 

The registered mark consists of the words "Sap"; 
Maple Syrup" arranged immediately above the I 
representation of a single maple-leaf, the leaf hav- 
ingplacedthereon the words "Maple Leaf Brand." 

It is stated by the registrant that the essential I 
features of the registered mark "are the word- | 
symbol ' Sap ' and the representation of a maple- 
leaf." 




The ExamTn~er is of tiie opinion that the brand of 
syrup to which each of the marks is applied would 
be known as the maple-leaf brand of syi'up, and 
the appellant does not contend otherwise. 

The two marks also resemble each other in ap- 
pearance to such an extsnt as to cause confusion 
in the minds of the purchasing jDublic. 

As stated in the case of ex parte Vogel & Son, (99 

O. G., 2331:) 

In considering the identity o£ two trade-marks the appear- 
ance of the marks is as important as the soi^nd of the words 
used therein wheji these words are spoken. Both senses are to 
I be used in determining the question whether or not one mark 
so nearly resembles the other as to have the tendency to'mislead 
and to cause contusion in the minds of the purchasing public. 

This proposition is applicable to the facts in this 
'case. 

There is another reason for refusing registration 

j of this mark and that is because the present rep- 

j resentation has in it a large element of desciiptive 

matter. The ordinary pmchaser would naturally 

1 expect to find maple-syrup in a can known to eon- 

j tain a syrup if the can was designated by a mark 

such as is used by the appellant. If the can was 

found to contain some other kind of sj-r ^.p, the pur- 

' chaser would be deceived. 

The mark is held to be either descriptive or de- 
ceptive when applied to the particular class of 
goods here specified. 

The decision of the Examiner of Trade-Marks is 
affirmed. 









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